Australia: Judge Confirms Divisional Australian Innovation Patents Can Be Infringed Prior To Being Filed

Last Updated: 14 October 2012
Article by Caroline Bommer and Scott Philp

Judge Confirms Divisional Australian Innovation Patents Can Be Infringed Prior To Being Filed

Hot on the heels of IP Australia proposing an amendment of the Patents Act to lift the innovative step threshold for innovation patents – discussed here, comes another interesting development in Australia’s unique innovation patent law.


In Britax Childcare Pty Ltd v Infa-Secure Pty Ltd [No 3] [2012] FCA 1019 (18 September 2012), Justice Middleton addresses a problem akin to that proposed by philosopher, George Berkeley regarding existence and perception. In this case however, the philosophical problem of a tree falling in a forest where no-one is around to hear, might be re-cast as, “if a patent does not exist at a point in time, can it be infringed at that time?” The answer according to Justice Middleton, might well be, yes, at least in the case of innovation patents.

Legislative Analysis

In the judgment, Justice Middleton considered the question: "At what time do the rights of conferred by patents first arise?"

Consulting the Patents Act 1990, Section 13 states that a patent gives the patentee the exclusive rights to exploit the invention during the term of the patent. The patent “term” is defined in Sections 67 and 68 for standard and innovation patents respectively as being 20 and 8 years from the date of the patent. Section 65 and Regulation 6.3 generally assigns the date of the patent as the filing date, or, where the patent is a divisional application, as being the same date of patent as its parent.

In this regard, other than the length of term, the Act treats standard and innovation patents similarly. Moreover, both standard and innovation patents are limited as to when rights provided by the patent may be enforced. In the case of Innovation Patents, this is dealt with under Subsection 120(1A) which states that infringement proceedings in respect of an innovation patent cannot be started unless the patent has been certified. A different section, Section 57 deals with standard patents and subsection (3) confirms that the applicant does not have a right to start proceedings ... unless a patent is granted on the application

Section 57 however, goes on to further define the rights provided by a standard patent. The concept of provisional protection is laid out in Subsection 57(1), whereby a patentee may retrospectively bring an infringement action as far back as the date the patent claims were open for public inspection. In addition Subsection 57(4) provides for a possible defence against infringement of a provisional right if the defendant proves that a patent could not validly have been granted to the applicant in respect of the claims (as framed when the act was done). Accordingly Section 57 not only confirms the patentees right to protection from publication, it also provides for a basic tenet of patent law that where there has been no fair notice of the existence of a patent right, any infringer should be entitled to a defence against infringement of that patent right.

Importantly however, Section 57 quite clearly only applies to standard patents and there are no corresponding parts of the Act which deal with provisional rights or defences thereof for innovation patents.


Consequently, in view of a lack of any constraint of the patent rights provided by Sections 13 and 68, Justice Middleton has found that that once granted, the owner of a certified innovation patent may retrospectively seek damages for any infringing act which occurred within the 8 year patent term. In the case of a divisional innovation patent filed some time after the filing date of the parent, this means that the patentee can bring a retrospective action for acts committed prior to lodgement of the innovation patent on claims of any scope having a basis in the original disclosure. It also means that the process of certification has no bearing on the commencement of the rights provided by the patent.

Justice Middleton dismissed arguments that the patentee should not be able to make claims of infringement for acts occurring prior to certification. Instead he considered that his finding was consistent with the aims of the innovation patent regime as reflected in the Revised Explanatory Memorandum to the Patents Amendment (Innovation Patents) Bill 2000 (Cth) to facilitate the quick and convenient grant of patents.

Other Points of Interest

The case of Britax v Infa-Secure is already unconventional in Australia because the question of claim construction – seen as points of law, have been separated and decided in initial hearings prior to the main trial. Based on this predetermined construction of the claims, the court is yet to address issues of validity and infringement. It will be interesting to see if the court uses any discretion in awarding damages, should they find infringement of patent claims unknown to the infringer, at the time of infringement.

Summary and Recommendations

Where there is no current or imminent infringement, there has always been little incentive to make a voluntary request for certification of a granted innovation patent, because in an uncertified state, the patentee need not limit the claims and has more options for changing the scope to suit future needs The above judgement only adds to the argument, as it appears that certification has no bearing on when the innovation patent right commences, irrespective of the fact that there might be substantial amendment to the claims during examination.

These influences have recently been partially tempered by the Raising the Bar Act commencing on 15 April 2013. On that date, any innovation patent where certification has not been requested, will be held to the new raised standards of sufficiency and utility. While most professionally drafted innovation patent specifications will already meet these international standards, there could be specifications prepared to meet the current minimal requirements that could be vulnerable should the new provisions be allowed to apply.

Of course IP Australia’s desire to see the entire innovative step threshold lifted to that of an inventive step will have a considerably deeper impact on the protection afforded by innovation patents in Australia than the raising the bar legislation. Either way however, this latest case further reinforces our recommendation that anyone considering patent protection in Australia should make the most of the substantial advantages of the current innovation patent system while they still apply.

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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Caroline Bommer
Scott Philp
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