In many jurisdictions it is becoming increasingly difficult
to get IP protection for inventions that seem relatively simple
or incremental, yet which represent significant investment for
the commercialising entity. However, Australia has two regimes
that may provide a strategically useful solution. The first is
via the Innovation Patent system and the second via the route
of Registered Designs.
With both systems grant or registration is automatic
provided the basic filing formalities have been met. However,
they cannot be enforced until they are examined and certified.
This means that preliminary rights can be established at a
relatively low cost and examination and prosecution costs can
then be deferred until the applicant has a need to enforce the
properties against third parties.
Innovation Patent System
The Australian innovation patent system is a second tier
patent system specifically targeted at providing protection for
developments that may fall in the gap between standard utility
patents and registered designs. While the novelty requirements
are the same as standard patents, in that the
invention/innovation must not have been disclosed in any form
in any place prior to the priority date, the inventiveness
threshold is intended to be lower. To this end, an innovation
patent requires that the invention be novel and include an
"innovative step". The test for innovative step is
that the difference between the claimed invention and the prior
art base must make a substantial contribution to the working of
the claimed invention. While there has been little useful
judicial interpretation as to exactly what this means, case
studies of two sample innovation patent cases that have passed
certification by IP Australia can be found at the following
link. The cases relate to a surfboard carrying sling and a
hand warming glove with integral drink cooler sleeve.
While the two examples mentioned above relate to simple
devices, it is important to note that unlike many utility model
regimes, innovation patents are not limited to device claims
and can cover the same subject matter as standard patents which
includes methods, processes and compositions. While there is a
limit of five claims, provided the unity of invention
requirements are met, a single application could include for
example, an apparatus claim, a method or process claim and a
product of process claim.
Unlike the majority of jurisdictions around the world, the
functionality of a design is not in itself a bar to
registration in Australia. This makes the system ideal for
protecting products or components of products that may have
minimal aesthetic content, yet represent significant design
investment value. There is still the requirement that the
design be "new and distinctive" over the prior art.
However, the mere fact that the design consists of, or
includes, key elements which are configured to perform a
certain function, will not preclude it from registration so
long as the overall design meets the basic novelty and
Having said this, it is important to note that Australia
Design Legislation currently has "right of repair"
provisions which provide a defence to infringement relating to
products sold and used as spare parts. As such designs for
component products that could be used as spare parts are
registrable and enforceable against unauthorised use as
original equipment forming part of a complex product, but
cannot be enforced against products falling within the scope of
the design that are intended for use as spare parts.
Grace Period for Patents
As indicated in the table above, the Australian innovation
patent system, like the standard utility patent system,
includes a grace period provision. Accordingly, if a potential
applicant has recently disclosed a product that may be suited
to an innovation patent application, provided the disclosure
was by the applicant and was within the last 12 months, there
may still be an opportunity for valid protection.
It will be appreciated that the specific requirements of
each regime are reasonably complex and this is not intended to
be a comprehensive overview. However, if you would like any
additional information and/or an assessment of a particular
case or product/process in mind, please address your enquiries
to Caroline Bommer.
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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