5.6.15.1 The Innovation Patent System

Also in this Chapter:

• 5.6.15.2 Types of Innovation Patents
• 5.6.15.3 Formalities Check for Innovation Patents
• 5.6.15.4 Examination of Innovation Patents
• 5.6.15.5 Determining Innovative step
• 5.6.15.6 Certification, Opposition, Ceasing/Expiring of Innovation Patents

Key Legislation: 

Patents Act:

• s52(3) Formalities check and acceptance of innovation patents
• s79B Divisional applications prior to grant of patent
• s79C Divisional applications for innovation patents may be made after grant of an innovation patent

Related Chapters:

• 5.6.1.1 Priority Dates and Filing Dates
• 5.6.10.1 Requirements to claim divisional status
• 5.6.10.2 Priority Entitlement
• 5.6.10.3 Time limits for filing
• 5.6.10.4 Status of parent
• 5.6.10.5 Issues specific to the Examination of divisional applications
• 5.6.10.7 Annex A – Procedural Outline to Divisional Application Examination

Note that the innovation patent system has been phased out.

Innovation applications must have a date of patent before 26 August 2021. This can be achieved by:

• 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.

On this page

• Overview
• Key Features of Innovation Patent System
• Processing of Innovation Patents.​​​​​​​​​​​​​​

Overview​​​​​​​

The innovation patent system enables applicants and inventors to obtain quick and inexpensive patent protection for their inventions compared with standard patents. This is achieved in two main ways:

1. Grant occurs without examination: 
   Unlike standard patents where examination is a prerequisite for grant. Examination of an innovation patent (and the associated costs) only occurs when initiated by the patentee, third parties, or the Commissioner. However, it should be noted that, in contrast with standard patents, the grant of an innovation patent does not bestow any enforceable rights and privileges upon the patentee. This only occurs after examination has been carried out and the innovation patent is certified. Thus, even if patentees threaten to enforce their rights before certification, this is considered to be an unjustified threat. Therefore, the role of examination in the patent system is retained.
2. Requires a lower threshold, an innovative step rather than an inventive step:
   ​​​​​​​It is not necessary for an innovation patent to be in respect of an inventive step, as is the case with standard patents. Rather, an innovation patent need only be in respect of an innovative step, in accordance with the Act.

Key Features of the Innovation Patent System

• An innovation patent has a maximum term of 8 years and is limited to 5 claims, any number of which may be independent;
• an innovation patent application may be:
  • a divisional application filed from a standard or innovation application that was filed before 26 August 2021, or otherwise has a date of patent of before 26 August 2021 (by being a divisional application itself);
  • divisional applications filed from granted innovation patent that has a date of patent before 26 August 2021; or
  • made by converting any standard application that has filing date, or otherwise has a date of patent before 26 August 2021, to an innovation patent application.
• An innovation patent application cannot be:
  • filed as independent applications;
  • associated with provisional applications (without being a divisional application);
  • a Convention application;
  • additional applications; or
  • filed by the PCT route.​​​​​​​​​​​​​​

Processing of Innovation Patents

An innovation patent will potentially go through a number of processing phases. These are, in order of occurrence (except for opposition and re-examination which may be reversed):

• filing;
• formalities Check;
• acceptance;
• grant (plus publication);
• examination;
• certification (plus publication);
• opposition;
• re-examination; and
• ceasing/expiring. 

The filing date is determined by reg 3.5 (date of filing of patent request accompanied by complete specification, see 5.6.1.1 Priority Dates and Filing Dates).  ​​​​​​​

Examination, certification, opposition and re-examination must be initiated by the patentee, third parties or the Commissioner. Therefore, a granted innovation patent which ceases will not necessarily have been through all of these phases.

In most situations, acceptance and grant will be practically the same action. However, the separation of these processing phases allows for those cases where there is a prohibition on the publication of the patent (for security reasons). Thus, these cases can be accepted, but not granted.