the innovation patent application being a divisional application where the parent application has a date of patent before 26 August 2021;
the innovation patent application being a divisional application where the parent application is a granted innovation patent; or
converting any standard application that has a date of patent before 26 August 2021 to an innovation application before acceptance.

In addition, every claim in an innovation patent must have a priority date that is before 26 August 2021.

Overview

Certification is the outcome of a favourable examination finding. The major implication of certification is that the innovation patent becomes enforceable. However, other important consequences arise from certification including:

the provisions of s102(2) apply to any s104 amendments requested after the decision to certify;
opposition and re-examination actions can now be initiated; and
the specification is published again, as a B4-level publication.

Certification in error – revocation of certification

Once an application has been formally certified, that is, the Certification Task has been completed, that certification cannot be reversed other than in exceptional circumstances.

Where it becomes apparent after certification that the decision was affected by an error, similar considerations to those discussed in 5.6.9 Acceptance and Grant apply.

If a certificate of examination of an innovation patent is issued on or after 15 April 2013, the certificate may be revoked under s101EA. This has the effect that the patent is taken never to have been certified and examination of the patent can continue.

The final date for certification is then governed by reg 9A.4(g) and will generally be the later of the date 6 months from the examiner’s first report and 3 months from the decision to revoke certification.

Furthermore, under reg 10.6B, any leave to amend that was granted at the time of the certification decision (that is, the decision under s101E(1)(a)) and allowance of the amendment will also be revoked. Examination can then proceed as if certification and allowance of the amendments had not occurred.

The power to revoke certification under s101EA is only to be exercised by the Assistant General Manager (Oppositions) or the Supervising Examiner (Oppositions). Certification can also only be revoked if there are no relevant proceedings pending.

If it becomes apparent that an error has occurred in certifying an innovation patent, the matter is to be referred to Oppositions immediately.

Opposition

An innovation patent may be opposed under s101M at any time after certification. For oppositions under different sections of the Act (for example, s104 or s223) the usual time limits and procedures apply, notwithstanding that an innovation patent is involved.

When an opposition under s101M to an innovation patent is filed, it must be accompanied by a statement of grounds and particulars. The time for filing the statement can only be extended under s223.

Failure of the opponent to provide the statement of grounds and particulars with a notice of opposition is a ground for dismissal of the opposition by the Commissioner.

Re-examination

The re-examination procedure for innovation patents is the same as that for standard patent applications (see 5.6.13 Re-examination).

Ceasing/Expiring

An innovation patent will expire at the end of 8 years from the date of the patent. The date of a patent is either the date of filing, or the date determined by reg 6.3 (s65).

An innovation patent ceases if, inter alia:

the filing fee is not paid;
the patentee fails to pay the examination fee (or half of the fee if a third party requests examination) within the time allowed;
the innovation patent is not certified within the time allowed from the first examination report; or
a renewal fee (required from the second anniversary of the date of the patent) is not paid by the due date or within the 6-month grace period (s143A(d) and reg 13.6).

Notification by third-parties

Under s28, any person may notify the Commissioner that an innovation patent is invalid because the claimed invention does not comply with s18(1A)(b). The procedure is essentially the same as that outlined for standard patents. However, an exception to this is that the person giving notice has up until a decision is made by the Commissioner to certify an innovation patent to provide their notification. Regulation 9A.5 requires that the information provided in the notice must be considered by the Commissioner if examination is carried out on the patent.

5.6.15.6 Certification, Opposition, Ceasing/Expiring of Innovation Patents

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