Australia's second-tier innovation patent will be phased out from 26 August 2021 and it will no longer be possible to file innovation patents having an effective filing date on or after this date.

Innovation patents have proven to be a valuable tool for innovators to obtain robust enforceable rights quickly in Australia. This is largely due to a lower threshold for validity, with the usual remedies still available for infringement. Details are provided below.

Advantages of innovation patents

While an innovation patent has a maximum term of 8 years and can contain only five claims, grant is obtained within about one month of filing (subject to certain formalities requirements). Substantive examination and certification is also required to enforce an innovation patent. However, examination can be requested at any time during the patent's 8-year life and the patentability threshold is significantly lower than for standard patents. In particular, the claims of an innovation patent need only rise to the level of an "innovative step", i.e., make a substantial contribution over the prior art.

Further, the remedies available for infringement of a certified innovation patent are the same as for infringement of a standard patent. Therefore, an innovation patent filed as a divisional of a standard patent may be particularly advantageous when seeking injunctive relief against a potential infringer when the standard patent is yet to be granted or is vulnerable to revocation on the ground of inventive step.

Given Australia's relaxed approach to divisional-parent claim overlap (i.e., only claims that are in substance identical in scope are impermissible), a divisional innovation patent may be directed to a subset of the claimed subject matter (e.g., encompassing the applicant's commercial embodiment) of the parent standard patent.

Last chance to file an innovation patent

From 26 August 2021, it will no longer be possible to file new stand-alone innovation patents, i.e., having an effective filing date on or after this date. However, it will still be possible to file innovation patent applications as divisionals of standard patent applications having an effective filing date that is before 26 August 2021 (and up to three of months from the date that acceptance of the parent application is advertised).

Existing rights will also be unaffected, namely:

  • Innovation patents filed before 26 August 2021 will be entitled to see out their full 8-year term.
  • Pending standard patent applications with an effective filing date (and priority date) for each claim that is before 26 August 2021 may still be converted to innovation patents.


Where possible, we recommend taking the following actions before 26 August 2021:

  • filing any proposed stand-alone patent applications; and/or
  • where parallel standard and innovation patent protection is sought, filing at least the complete standard patent application in Australia (or PCT application designating Australia) so as to preserve the right to file a divisional innovation patent application after the deadline.

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.