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Obvious Inventions Patentable: The Australian Innovation Patent


Written by Ian Lindsay
Posted: June 15, 2014 @ 10:00 am
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Australia has two types of patents, a standard (utility) patent and an innovation patent. Innovation patents where introduced in 2001, replacing the Australian “Petty Patent”. The Petty Patent was intended for inventions of short commercial duration but which had a suitably high level of inventiveness, supposedly increasing the inventors return on investment and encouraging greater innovation.

A government review in 1995 suggested that the Petty Patent was not delivering on these goals and recommended a system which “protects incremental inventions that may not be inventive enough to warrant standard patent protection and are not covered by design legislation” [emphasis added].

As a result, the innovation patent system was introduced and intended to stimulate innovation in Australian small to medium business enterprises (SMEs) by: (1) providing Australian businesses with IP rights for their lower level inventions that meant that competitors could not copy them; and (2) to reduce the compliance burden on users of the patent system by providing easier, cheaper and quicker rights for inventions than the rights formerly provided by the petty patent system.

Essentially, innovation patents are 8 year short form patents available in Australia as an alternative, or in parallel with standard, or utility, patents. An innovation patent can be filed on an obvious invention, is hard to invalidate and, when filed as a divisional from a standard patent application, can be infringed from a date before the standard patent application was published.

 

Key Aspects of an Innovation Patent

The Innovation patent is defined in the Patents Act 1990 (the Act) as a patent granted under Section 62, whereas a standard patent is granted under Section 61. The differences in operation of an innovation patent, and the process to obtain such a patent, are legislated in the Act as exceptions when the patent is an innovation patent. This means that, where no determination is made between a standard and an innovation patent in the Act, the law applies to both. It is, therefore, worth summarising a number of the key similarities and differences to a standard patent.

 

Similarities

  • 1 year grace period (s24);
  • Serves to provide a right of convention priority in respect of new matter (Paris Convention, Article 4);
  • The exclusive rights conveyed: make, hire, sell or otherwise dispose of the product, offer to make, sell, hire or otherwise dispose of it, use or import it, or keep it for the purpose of doing any of those things (s13 & Schedule 1: “exploit”)
  • relief against infringement: injunctions, damages and account of profits (s122);
  • novelty requirements (s18(1) and (1A));
  • divisional innovation patents allowed (s79B & s79C)
  • patentable subject matter – with one exception: plants and animals, and the biological processes for the generation of plants and animals, are not patentable by an innovation patent (s18).

 

Differences

  • 8 year term (s68);
  • Published soon as it is granted, which is likely to be a matter of weeks (s62(2));
  • Substantive examination optional, but right is only actionable once “certified” by examination (s101A);
  • Innovative step requirement, rather than inventive step (s18(1A) & s7(4));
  • Only 5 claims allowed (s40(2)(c)); and
  • Examination must be completed, in the normal course of matters, within 6 months from the first examination report (r9A.4);
  • A standard patent application cannot claim divisional status from an innovation patent (s79B(1)(b));

 

Double Patenting

It is possible to file an innovation patent as a divisional of a standard patent application, but there is a “double patenting” limitation, which should prevent IP Australia from accepting standard patents, or certifying innovation patents for that matter (s101B(2)(h)), having the same claim scope as an innovation patent with the same priority date and same inventor (s64).

There is, currently, no penalty in the Act if a patent is granted with the same claim scope as an earlier patent (see Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302). However, a decision on this very subject is expected soon in an Apple v Samsung matter at the Federal Court of Australia. The basis of this action is that Apple had standard patents accepted and granted at the same time that it had innovation patents covering the same claims. Apple has since allowed the innovation patents to lapse, so if Samsung where successful and the standard patents were revoked, Apple would lose all protection on these inventions.

 

An Obvious Innovation

An innovation patent must be to an invention which is novel and has an innovative step to be valid. What is considered novel is well established in Australian law and does not differ from what is required of standard patents.

 

Innovative Step

The intention of the standard of “inventiveness”, or “innovative step”, required to obtain an innovation patent was a “modified form of the expanded novelty test” (Review of the Petty Patent System, ACIP, 1995, pg 7 – the expanded novelty test is set out in Griffin v Issacs (1938) 12 ALJ 1969) and, specifically, it was not required that the improvement was “non-obvious” (Explanatory Memorandum for the Patents Amendment (Innovation Patents) Bill 2000).

However, there is good argument that the statutory language is more lenient than the intended expanded novelty test.

The first decision considering what constituted an “innovative” step was handed down in 2008, in Delnorth v Dura-post ([2008] FCA 1225), and, subsequently, the decision was upheld on appeal in 2009 ([2009] FCAFC 81).

The Delnorth v Dura-post decision included the steps required to determine whether a claim had an innovative step([2008] FCA 1225 at [52]), as follows:

  1. compare the invention as claimed in each claim with the prior art base and determine the difference or differences;
  2. look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim; and
  3. ask whether the invention as claimed only varies from the prior art (s7(5)) in ways that make no substantial contribution to the working of the invention.

“Substantial contribution” means a contribution which is “real” or “of substance”, but has nothing to do with obviousness. Particularly, the difference does not require that it is “better” than what has gone before, just that it makes a substantial contribution ([2008] FCA 1225 at [53] and [61]).

As a result of this decision, and subsequent decisions such as Seafood Innovations v Richard Bass ([2011] FCAFC 83), SNF v Ciba ([2012] FCAFC 95), Mizzi Family Holdings v Morellini ([2013] FCA 1435), validity of an innovation patent can be a difficult matter to challenge where novelty can be determined. At least, one decision has issued where all 5 claims of an innovation patent where found to be invalid for lack of an innovative step, Dynamite Games Pty Limited v Aruze Gaming Australia Pty Limited ([2013] FCAFC 96). However, the principles of Delnorth v Dura-post where confirmed.

 

Infringement

As indicated above, relief from infringement for an innovation patent is the same as that of a standard patent. However, there has been some suggestion, especially in the wake of the Federal Court decision in Seafood Innovations v Richard Bass ([2010] FCA 723) (which was later overturned on appeal to the Full Federal Court ([2011] FCAFC 83)) that, whilst it is extremely hard to invalidate a certified innovation patent, the claims of an innovation patent tend to be construed more narrowly, thereby reducing the risk of infringement. However, the Full Federal Court reasoning in Seafood Innovations v Richard Bass demonstrated there is no special way to construe innovation patent claims separately from standard patent claims. The construction used by the Full Federal Court cites as precedent standard patent cases whilst construing the claims.

There is one important difference between innovation patents and standard patents when it comes to infringement. According to the Act, a standard patent may be infringed from the date it is published (s57). That is, relief may be sought back to the publication date. There is no comparable provision for Innovation Patents. Luckily, Britax Childcare v Infa-Secure [No 3] ([2012] FCA 1019) has provided a decision which deals with this point. The lack of an equivalent to Section 57 was, apparently, intentional ([2012] FCA 1019 at [14]), as innovation patents would be published after grant, which would, typically, be shortly after filing.

The issue at hand in Britax Childcare v Infa-Secure [No 3] was that the innovation patents (9 of them filed between 2007 and 2009) where divisional applications from a standard patent application (filed on 9 June 2005). Their effective date was the date of the corresponding standard patent application. Therefore, what was the corresponding date to assess infringement?

Justice Middleton decided that the innovation patents can be infringed from their effective date, 9 June 2005, bringing up the curious situation that an innovation patent filed in 2009 can be infringed from 9 June 2005.

 

Summary

An innovation patent can be filed on an obvious invention, is hard to invalidate and, when filed as a divisional from a standard patent, can be infringed from a date before the standard patent application was published. Used strategically, innovation patents provide an extremely powerful right.

 

About the Author

Ian Lindsay is an attorney with Wadeson Patent & Trade Marks Attorneys in Melbourne, Australia. Ian has extensive experience in managing IP portfolios and conducting oppositions, both in Europe and in Australia. His technical background and experience has given him a thorough understanding of electrical circuits, electronics, telecommunications, imaging, optics, physics and software, amongst other disciplines. Having a background in Mechanical Engineering allows for extensive cross-disciplinary understanding to get the message across quickly. Ian is qualified as a patent attorney in Australia, New Zealand, Europe and the UK. He has a Bachelor of Engineering (Joint Hons) in Mechanical and Electrical Engineering from the University of Strathclyde in Glasgow (UK). You can contact him at Ian.lindsay@wadesonip.com.au.


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