The Australian Advisory Council on Intellectual Property
(ACIP) have been asked by the Minister for
Innovation, Industry, Science and Research to investigate the
effectiveness of the innovation patent system in stimulating
innovation by Australian small to medium business enterprises
(SMEs). As part of that review, ACIP has now
released an "Issues Paper" to encourage discussion on
this topic and assist in conducting wide-ranging public
consultations. The purpose of the paper is to suggest points that
may be taken into consideration during the review process. However,
there is a strong inference throughout the document that the system
as it stands, particularly in light of recent judicial
interpretation, offers opportunities and rewards to the patentee
that are potentially excessive when compared to the ease with which
they are obtained.
The Issues Paper itself makes very interesting reading. The
introductory section provides an excellent summary regarding: how
the innovation patent system differs from the standard patent
system; how the system is proposed to be amended under the
Intellectual Property Laws Amendment (Raising the Bar) Bill 2011;
as well as filing trends since commencement broken down by
applicant category (individuals or companies) and by local or
foreign origin. There is also a summary comparison of the
Australian innovation patent system with its top 20 trading
partners for FY2009-2010.
However, the section of most interest relates to concerns that
the system as implemented may have generated unintentional and
undesirable consequences, many of which are potentially at odds
with the original aims of the legislation. The consequences to
which these concerns relate include:
Quick protection for high level inventions as well as low
Increased use by large corporations
Same infringement relief as with standard patents, while
seemingly low threshold inventiveness requirements (as currently
interpreted by the Courts) makes them potentially difficult to
challenge and revoke
Increased use as strategic divisional applications
Use in "evergreening" strategies to extend patent
coverage period by patenting trivial changes
Uncertainty when certification of granted innovation patents is
Given the number and extent of the identified concerns, it seems
likely that some degree of change will be proposed as a result of
the review. Whether this change will result in Australia abandoning
the system in its entirety, or enacting some restrictions to:
narrow eligible subject matter; limit divisional applications;
and/or reduce the level of remedies for infringement, is impossible
to predict at this early stage. However, it seems reasonable to
assume that at least some of the opportunities and consequential
threats resulting from the present system may be limited within the
next few years.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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