Spotlight moves to innovation patents

On 17 August 2011, the Advisory Council on Intellectual Property (“ACIP”) released an issues paper entitled “Review of the Innovation Patent System” (the “Issues Paper”).  A copy of the Issues Paper can be accessed here.  Submissions close on 14 October 2011.  ACIP is also planning to hold round-table workshops in both Melbourne and Sydney.

The focus of the Issues Paper is whether innovation patents still have a role to play in Australia.  The Issues Paper remarks that the innovation patent system may be at odds with the aim of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, which was introduced into the Senate on 22 June 2011. Some of the issues identified in the Issues Paper are:

  • the fact that innovation patents require a lower threshold of inventiveness than standard patents, yet the same remedies are available for infringement;
  • the ability of applicants to file innovation patents while concurrently applying for a standard patent;
  • the ability to file divisional innovation patents during the pendency of a standard patent application; and
  • the potential for applicants to use innovation patents for ‘evergreening’, especially in the pharmaceutical industry.

Moreover, the Issues Paper notes that previous reviews of the innovation patent system have been carried out prior to the Federal Court considering the meaning and/or operation of the legislative provisions specific to innovation patents.

The Issues Paper is the latest in a series of issues papers, discussion papers and consultation papers on the Australian patent system.  In the last few years the focus has been on standard patents, and months of consultation and discussion papers culminated in the release of the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 which has yet to be passed by the Senate.  It remains to be seen whether this Issues Paper will lead to any changes to the innovation patent system in the near future.

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