5.6.15.4 Examination of Innovation Patents

Also in this Chapter:

• 5.6.15.1 The Innovation Patent System
• 5.6.15.2 Types of Innovation Patents
• 5.6.15.3 Formalities Check for Innovation Patents
• 5.6.15.5 Determining Innovative step
• 5.6.15.6 Certification, Opposition, Ceasing/Expiring of Innovation Patents

Key Legislation:

Patents Act:

• s18(1)-(3) Patentable inventions
• s28 Notice of matters affecting validity of standard patents
• s40 Specifications
• s50 Application or grant may be refused in certain cases
• s64 Grant: multiple applications
• s79C Divisional applications for innovation patents may be made after grant of an innovation patent 
• s101B Examination of an innovation patent
• s102 What amendments are not allowable?
• Chapter 9A Examination, re-examination and opposition - innovation patents

Patents Regulations:

• reg 3.14D(2) Prescribed documents: basic application
• reg 9A.1(5) Request for Examination
• reg 9A.4(d) Period for Examination
• reg 13.4(1) Prescribed period: acceptance of request and specification

Related Chapters:

• 3.2 Customer Service Charter (Timeliness Standards)
• 5.6.1.4 Balance of Probabilities Standard
• 5.6.2.7 Report Dispatch, Correction of Report etc.
• 5.6.5 Novelty, Whole of Contents, and Secret Use
• 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)
• 5.6.9.1 Conditions and Time for Acceptance
• 5.6.9.3 Extension of Acceptance Period
• 5.6.9.8 Lapsing of an application
• 5.6.9.10 Double patenting, Multiple Applications
• 5.7.1.2 Who can request amendments?
• 5.7.2 Amendment of the patent request and other filed documents

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
• General considerations:
  • Fees payable
  • Withdrawal of examination request
  • Copy of adverse reports
• Grounds of examination:
  • Ground (1): Section 40
  • Grounds (2) and (3): Section 18(1A), 18(2) and 18(3):
    • Patentable subject matter
    • Novelty
  • Ground (9): Subsection 101B(2)(ha)
• Response to report
• Non-receipt of report
• Extending the period of examination
• Private applicant cases
• Amendments
• Annexures.

Overview

Chapter 9A requires the Commissioner to carry out examination of an innovation patent if requested to do so by the patentee or a third party. The Commissioner may also decide to carry out examination. Only a granted innovation patent can be examined.

All examiners hold the delegation to examine innovation patents, however acceptance delegation is required for certification.

The timeframe for issuing a report on an innovation patent is 8 weeks from the date of receiving the request for examination (in accordance with the 3.2 Customer Service Charter (Timeliness Standards). However, if the examination fee is not paid at the time of making the request, the 8 week period commences upon payment of the fee.

Once examination has commenced, no further requests for examination can be made (reg 9A.1(5)).

General considerations

Fees payable

If patentees request examination, they must pay an examination fee. If a third-party requests examination, both the third party and the patentee must pay an examination fee. If the patentee fails to pay this fee, the patent will cease. If the Commissioner decides to examine the innovation patent, the patentee is not required to pay any fee.​​​​​​​

Withdrawal of examination request

Only the person who requested examination can withdraw the request and withdrawal can only be based on error. The request for examination cannot be withdrawn after examination has begun (reg 9A.1(4)).

Copy of adverse reports

Where a third-party requests examination, a copy of each adverse report is to be sent to that party, as well as the patentee.

In the case of a clear report, CEG will send a notice of certification to the third party once the innovation patent has been certified.

Grounds of Examination

The grounds of examination which apply to innovation patents depend on the date of examination request or the time in which the Commissioner makes a decision to examine the patent.

Examination requests filed before 15 April 2013 or where the Commissioner had decided before 15 April 2013 to examine the patent

The grounds of revocation of an innovation patent for invalidity are similar to after 15 April 2013 except it does not include ground (9) below.

Additionally, the stringency of tests differs in that the Commissioner must be “satisfied” (not on 'balance of probabilities') that the criteria for novelty and innovative step are met. For all other grounds of revocation, the Act requires that the Commissioner “considers” that a ground for revocation has not been made out.

Examination requests filed on or after 15 April 2013 or where the Commissioner had not decided before 15 April 2013 to examine the patent

The grounds of revocation of an innovation patent for invalidity are as follows:

1. the patent does not comply with s40;

2. the patent does not comply with s18(1A)(a), (b), or (c);  

3. the patent does not comply with s18(2) or s18(3);

4. use of the invention is contrary to law;

5. the invention is a food or medicine containing a mere admixture of known ingredients;

6. the invention is a process producing a food or medicine through mere admixture of known ingredients;

7. the patent contains a claim that includes the name of a person as the name or part of the name of an invention;

8. the patent claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor where the relevant claims of each patent have the same priority date;

9. each claim in the complete specification does not have a priority date that is before 26 August 2021, that is, the patent does not comply with s101B(2)(ha); and 

10. the patent does not comply with other matters prescribed in the Regulations.

The consideration of these grounds is substantially the same as that of standard patent applications.

• grounds (4), (5), (6) and (7) are equivalent to s50;
• ground (8) is equivalent to s64(2) (see 5.6.9.10 Double patenting, Multiple Applications); and
• see below sections on the differences for grounds (1) - (3), and (9).

In considering the grounds of revocation, the Commissioner must be “satisfied, on the balance of probabilities” that the invention meets the necessary requirements (see 5.6.1.4 Balance of Probabilities Standard).

Note that examiners are not to object to the lack of a notice of entitlement. Entitlement is not a ground of examination (although it is ground of opposition) and there is no requirement for a notice to be filed (statements regarding entitlement are included in the patent request).​​​​​​

Ground (1): Section 40

The consideration of s40 issues is the same for innovation patents as it is for standard patent applications, except that innovation patents are limited to 5 claims, any number of which may be independent (s40(2)(c)).  

Where an innovation patent has more than 5 claims, examiners should issue a report stating:

"Your Innovation Patent does not comply with Section 40(2)(c) of the Patents Act because it has more than five claims defining the invention. You will need to file amended claims having no more than five claims."

[See PERP code E90].

Unless all claims can be examined with negligible additional effort, examiners should reserve opinion on all other examination issues pending response to the report.

Grounds (2) and (3): Section 18(1A), 18(2) and 18(3)

Subsection 18(1A) provides that to be a patentable invention for the purposes of an innovation patent, the invention as far as claimed in any claim must be:

• a manner of manufacture within the meaning of section 6 of the Statute of Monopolies;
• novel and involve an innovative step;
• useful; and
• not secretly used in the patent area without relevant authority.

Furthermore, s18(2) and s18(3) provide that certain inventions (that is, it must not be in respect of humans, plants, animals, or biological processes for their generation) are not patentable inventions for the purposes of an innovation patent. See Formalities check for further details.

Patentable subject matter

The subject matter of an innovation patent must meet the same manner of manufacture requirements as for a standard patent application (see 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)).

However, whilst examiners should consider the possibility of raising a manner of manufacture objection in tandem with an inventive step objection for standard patent applications (5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)), the same does not apply to innovation patents. The legislation on innovation patents stipulates that the requirement for an inventive step is replaced by the requirement for an innovative step, and that lack of an inventive step does not render an innovation patent invalid.

Note that if, during examination of a standard patent application, it is considered that there is a lack of patentable subject matter, examiners should only raise the possibility of converting the application to one for an innovation patent if there is subject matter for which a valid innovation patent could be granted and certified, and if the standard application has a filing date, or otherwise has a date of patent before 26 August 2021. This is only likely to arise where an objection of lack of an inventive step applies to the standard patent application, but there is the possibility that the requirements for an innovative step could be met. Otherwise, there should be no mention of innovation patents in the report.​​​​​​​

Novelty

The claims of an innovation patent must satisfy the same tests for novelty as those that apply to a standard patent application (see 5.6.5 Novelty). In particular, there is no difference in the prior art base against which novelty of the invention is compared for the two types of patent.

Ground (9): Subsection 101B(2)(ha)

The consideration of subsection 101B(2)(ha) is unique to innovation patents. It requires that each claim in the complete specification has a priority date of before 26 August 2021. To have a priority date of before 26 August 2021, each claim must define an invention that is disclosed in the parent (if a divisional application) or in the standard application to be converted (or an associated basic application) in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the art. 

Response to report

In general, the period within which examination must be carried out is 6 months from the date of issuing the first report under s101B.

If objections raised in an adverse report are still outstanding when the period for examination expires, the patent will cease.

Where a response to a report is received close to the expiry of the period for examination, similar procedures apply as for standard patent applications when responses are received close to the expiry of the period for acceptance (see 5.6.9.8 Lapsing of an application).

Where the time for examination expires on a day that the Office is not open for business, the examination process can be completed on the next day that the Office is open for business (in the same way as for the time for acceptance, see 5.6.9.1 Conditions and Time for Acceptance).

Where a response to an examination report is received in the Office after the final date for certification (FDC), the case file should not be forwarded to the relevant examination section. However, where an examiner does receive such a file, CEG should be notified, who will in turn advise the patentee of the status of the patent.

Non-receipt of report

If a report is issued but is not received by the patentee, then there may be grounds for an extension of time under s223 to the period for examination. Similar considerations apply as for standard patents (see 5.6.2.7 Report Dispatch, Correction of Report etc.).

Extending the period of examination

In certain circumstances, the period for examination may be extended as follows:

• where a "whole of contents" novelty citation is not yet published, by the period set out in reg 13.4(1)(d);
• in the case where an appeal has been made to a prescribed court in relation to the patent, 3 months from the date that the appeal is withdrawn,. finally dealt with, or determined (note that the court may substitute a period greater than 3 months); or
• where an adverse report raises a novelty or innovative step objection based on information in a s28 notice, 3 months from the date of the report in which that objection was first raised.

In these situations, the procedures to be followed are similar to those for standard patent applications (see 5.6.9.3 Extension of Acceptance Period). Thus, where examiners consider that the period for examination will be extended, they should first consult Oppositions. If Oppositions are in agreement, examiners must update the FDC in RIO prior to creating the examination report in DocGen. The examination report should indicate that the FDC is a later date. Additionally, a case note should be added to the file, indicating that the FDC has changed as a result of particular circumstances, for example a request by the Commissioner for the patentee to provide a copy of a basic specification.

Warning: The FDC should only be changed when it is appropriate to do so.  Examiners should consult Oppositions before changing the FDC in RIO.​​​​​​​

The examination report should indicate that the FDC is a later date (see below).

Example – Request for Basic Specification

A request by the Commissioner for a copy of a basic specification during examination may in some circumstances extend the period for certification by up to 5 months.  In general, a patentee has 3 months from the date of the request in which to provide the documents (reg 3.14D(2)).  However, where the period ending 5 months from the date of a report that first requests the patentee to provide a basic specification extends beyond the FDC that otherwise applies (generally 6 months from the date of the first report), the FDC will be the later date, i.e. 5 months from the date of the report which first mentions the objection (reg 9A.4(d)).  This later date is to be specified in the report as being the final date to remove all grounds of revocation by including an additional comment in the introductory paragraph as follows:

"The provisions of regulation 9A.4(d) provide that the final date to remove all grounds of revocation is now 5 months from the date of this report.”

Private applicant cases

In the case of private applicants, examiners must include the following text at the end of any adverse examination report:

“You must pay annual renewal fees by when they are due, or your patent will cease. Please note that you will not be notified by the Office of any due dates for the payment of fees. You will need to keep track of this yourself. For innovation patents, the first of these fees is usually due two years from the filing date, however, depending on the circumstances of your application, another date may apply. Information about the fees that you will need to pay and when they will be due may be obtained by phoning 1300 651010.”

[See PERP code R71].

Amendments

The procedure concerning amendments for innovation patents is substantially the same as for standard patents (see 5.7 Amendments), except as follows:

• an amendment which would result in the specification claiming matter that does not have a priority date that is before 26 August 2021; 
• the provisions of s102(2) do not apply until a decision has been made to certify the patent;
• an amendment to the patent request for an innovation patent application filed under s79C to convert the application to a standard application is not allowable (s102(2B)). Note that, as is the case for standard patents, an amendment of the patent request of a granted innovation patent is also not allowable (see 5.7.2 Amendment of the patent request and other filed documents
• proposed amendments to the complete specification, other than those proposed in response to a formalities direction, cannot be allowed until after grant;
• an amendment which would result in the specification claiming human beings, plants or animals, or biological processes for the generation of human beings, plants, or animals is not allowable. This is to ensure that once an innovation patent has been granted, but not yet examined, the patentee cannot make amendments to include material which would contravene s18(2) or s18(3); and
• when an amendment is in respect of a granted innovation patent, examiners are required to check:
  • whether there is a mortgagee or licensee (see 5.7.1.2 Who can request amendments?); and
  • whether any court action is pending. This will be evident by the presence of documents labelled ‘Court Documents’ in the PAMS file. In this situation the matter should be referred to Oppositions.

Annexures

Annex A – Procedural outline for innovation patent application formalities check by examiners

Note that the order of these steps is not mandatory, and may be varied as appropriate.

Annex B – Procedural outline for examination of an innovation patent.

First report

Note that the order of these steps is not mandatory and may be varied as appropriate.

Further reports

Adverse

Clear