There have been many recent discussions regarding the
opportunities offered by Australian innovation patents that are
strategically filed as innovation patents at first instance, such
as those discussed in the following previous article
However, less well known is the fact that the innovation patent
system can also provide a very useful and cost effective fallback
option during prosecution of your Australian standard utility type
In this regard, a standard patent application can, at any time
prior to acceptance, be converted to an innovation patent
application, without payment of any official fees. It will then, in
most cases, proceed directly to grant, after which it can usually
be left unexamined until if and when required for enforcement. As
such, the costs from the point of conversion to grant are not
The following sets out a couple of scenarios where there may be
cause to look at abandoning a pending Australian standard patent
application, and where conversion to an innovation patent
application may be a useful option worth considering.
It is not unusual for Corporate applicants with international
patent portfolios to abandon all pending applications when
unexpected prior art surfaces that is clearly relevant to the
obviousness or inventiveness of the subject invention. However,
providing the invention is still novel over that prior art, and any
difference over the prior art contributes in a "real" and
useful way to the working of the invention, it may well pass the
significantly lower level test for "innovative step" as
required under the Australian innovation patent system. In this
regard the case law to date has indicated that obviousness is not a
consideration in applying this test. Accordingly, there may well
still be an opportunity to obtain valid and robust patent
protection in Australia in these circumstances. For more
information on case law regarding to the test for "innovative
step" please see the following link to an article on "The
Innovative Step Conundrum"
Funding Barriers and/or Change in Developing Strategy
There may also be cause to consider abandoning pending standard
patent applications in Australia if, at the time of review, there
is uncertainty as to the future commercialisation opportunities, or
a change in the strategy to exploit the subject invention in this
jurisdiction. Such a review is often prompted at the examination
phase after a direction to request examination issues, where
further significant investment in examination and prosecution fees
is then required to keep the standard application pending.
However, if at this time it seems there may still be some real
or potential commercial value in retaining pending rights, then
conversion to an innovation patent is an ideal option, as the
granted patent can be left unexamined until if and when it may be
needed further down the track, thereby deferring prosecution
While there are surprisingly few restrictions on subject matter
or claim type with the Australian Innovation Patent System,
particularly as compared with many second tier utility model type
regimes in other countries, limitations such as the reduced maximum
term of 8 years from the filing date and a maximum of 5 claims,
will of course needed to be taken into account when assessing the
options discussed above. If you would like more details regarding
the Innovation Patent System including the benefits and
limitations, we would be happy to provide that information.
So, the important message is that the option of conversion is
there for consideration, and in many instances can offer a low cost
high value alternative to otherwise simply allowing your standard
application to go abandoned and forfeiting all rights.
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).