The times they are a changin’? Innovation patents system review

The Options Paper of the Australian Government’s Advisory Council on Intellectual Property (ACIP), issued in August 2013, sets out various reform options for innovation patents, including their complete abolition.

Final submissions on ACIP’s review of innovation patents, initiated in 2011, can be submitted to [email protected] by 4 October 2013.

Innovation patents & ACIP’s review

Innovation patents were established in 2001 in a bid to increase innovation within Australian small-to-medium enterprises (SMEs). Although the remedies available are equivalent to those of standard patents, innovation patents have a lower inventive threshold and effective life than standard patents.

In 2011, the then Minister for Innovation, Industry, Science and Research requested that ACIP review the relevance and operation of the innovation system, due primarily to:

  • a general concern that the grant of innovation patents are overly generous, given that they have a very low inventiveness threshold, but the same remedies against infringement, compared to a standard patent; and
  • a concern that innovation patents are being used for strategic or tactical purposes, rather than to protect “lower-level” inventions of Australian SMEs (as intended).

An Issues Paper was issued in August 2011 (available: here), and ACIP later commissioned an economics report into the value of innovation patents (available: here).

In the meantime, IP Australia tried to separately address the perceived problem, issuing their own consultation paper (available: here) proposing to raise the inventiveness threshold for innovation patents to be the same as that for standard patents. The latest Options Paper seems to be a step back from that proposal, which was criticised as essentially rendering the innovation patent system obsolete.

Final review proposals

ACIP is seeking further input on the desired modifications to the innovation patents system (if any). The Options Paper sets out economic data on the value and use of innovation patents, as well as canvassing a range of proposals that ACIP received in previous calls for submissions on potential changes to the system.

The Options Paper is true to its name, and presents the full spectrum of options, including the extremes of “do nothing” at one end versus “abolish the system” at the other, and many compromise positions in-between. The table below highlights the range of potential options being considered:

Options highlighted within the ACIP Options Paper

Complete retention

Modifications to existing system

Complete abolition
Retain the innovation patents system – unchanged Changes to the inventiveness threshold Changes to the available remedies Changes to formalities and sufficiency Improved education approaches Any other   modifications Abolish innovation patents – possibly implementing   alternative protections (e.g. modify tort, design or copyright laws)

A number of detailed suggestions within these options include, for example: limiting relief available for infringement of an innovation patent (such as by removing access to interlocutory injunctions), bringing forward or mandating certification of innovation patents and limiting or restricting completely the number of divisional innovation patents able to be filed.

A number of submissions favoured a “wait and see” approach – noting that since the review had commenced in 2011, the IP Raising the Bar Act of 2012 has come into force, which was intended to ameliorate some of the more problematic uses of innovation patents.

Have your say

Final submissions on ACIP’s review of innovation patents can be submitted to [email protected] by 4 October 2013.  ACIP intends to deliver its Final Report on the future of the innovation patent system by the end of 2013 – so this is the last chance to be heard on potential modifications to it.

For more information on submitting comments see here.