Australia: The window to secure an innovation patent filing is closing

As we reported earlier this year, Australia is phasing out its second-tier patent, the innovation patent. The deadline to file an Australian patent application in order to attain an innovation patent is 26 August 2021.

The innovation patent can be a very valuable patent right for many inventions, offering the same rights as a standard patent over a maximum term of 8 years. Not requiring an inventive step, innovation patents can be easier and faster to obtain and difficult to invalidate. Patent applicants may therefore wish to bring forward the filing of a patent application to meet the deadline.

It is a complete application that must be filed in Australia by the deadline of 26 August 2021. The complete application may be an application for an innovation patent, an application for a standard patent or an international (PCT) application.

Important information for new Australian patent applicants: It is common to first file in Australia with a provisional specification. However, filing an Australian application with a provisional specification by the deadline will not retain the option to file an innovation patent. If a provisional specification is filed after 26 August 2020, applicants would be wise to monitor the innovation patent deadline in addition to or instead of the normal 12 month deadline for filing a complete application.

Important information for overseas patent applicants: Filing a national patent application outside of Australia by the deadline will also not retain the option to file an innovation patent. Overseas applicants should therefore consider filing an Australian or PCT application by 26 August 2021 to retain the option to pursue an innovation. This may require action earlier than the normal 12 month convention period.

Applicants who file a complete (i.e. non-provisional) Australian application or a PCT application by the deadline can rest easy: with an appropriate filing strategy the option to attain an innovation patent for the invention can be kept open for several 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.