Patent Law

Australia?s Innovation Patent System Provides Real Value

By Stephen Albainy-Jenei

The Australian innovation patent system is separate from, but interrelated with, the more widely used Australian standard patent system. Earlier, we’ve the innovation patent system allows patent applicants to rapidly obtain patent protection for inventions, especially those inventions having a relatively short market life and embodying a lower standard of innovation. In this regard the system bears some similarity to Australia’s previous petty patent system and to the German Gebrauchsmuster and like utility models in other jurisdictions.

The key features that put the statutory intention into practical effect are:

• grant (and publication) of rights, usually within about 1 to 2 months of filing an innovation patent application and without substantive examination. Examination and the cost associated with it only occur at the initiative of the applicant, another party or the Patent Office.
• testing for innovative step – instead of inventive step or non-obviousness – to determine whether the invention varies (in contrast to advances) from the prior art (which is potentially a little broader) in ways that substantially contribute to the working of the invention.
• a maximum term of 8 years.

Cheaper protection

For an invention that has less commercial value, an innovation patent can be obtained for less than half the cost of a standard patent, and quickly. For inventions of secondary importance where you may consider not filing as widely, an innovation patent provides a useful compromise of lesser cost and shorter term (and fewer claims) for an invention of less strategic significance. It therefore allows greater tailoring of the level of patent protection for the commercial importance of the invention.

Breaking opposition deadlock

Australia’s standard patent system has pre-grant opposition. It is not unusual for these proceedings to run for 3 to 6 years. After this time, a decision of the Patent Office may be appealed to the Federal Court.

The end result is that an Opponent has opportunity to create a deadlock, substantially delaying a prospective patentee for a standard patent from obtaining a granted patent right that can be sued on to obtain a court order for injunctive relief for infringements occurring prior to grant and especially during the opposition period.

In contrast, opposition to an innovation patent can only occur after an enforceable right has been obtained. It is this key feature of an innovation patent that is not available under standard patents that effectively allows the prospective patentee for a standard patent to break the opposition deadlock.

Specifically, an innovation patent application can be filed during opposition proceedings (either as a divisional of the opposed application or as a stand alone application -depending on the state of the art) and a certified granted innovation patent can be obtained within about 6 months of filing. With certification, the applicant in the opposition proceedings is then able to sue for patent infringement on the innovation patent, notwithstanding that opposition proceedings on the standard patent remain ongoing before the Patent Office.

Advantageously, Australian law does not have non-statutory double patenting rejections and only minor differences between the claims of patents are required to avoid a double patenting rejection.

Providing alternative base for infringement action

It follows from the above that an innovation patent can be used in an infringement proceeding in preference to a key standard patent. As it proceeds quickly to grant and can be certified quickly, an innovation patent can be tailored to a particular infringer.

One advantage of this is that an outcome on infringement can be obtained without risk of a full investigation into the validity of the key standard patent (although it would be open to a defendant infringer to seek revocation of the parent standard patent in addition to cross claiming for invalidity of the innovation patent in an infringement proceeding).

Bolstering patent position

A problem for any patentee is that others may design around the patent position. This can stem from narrowing of the claims where there is a higher threshold for allowance (obviousness). It may also occur because the claims inadvertently exclude future developments of the technology not known at the priority date.

Innovation patents are particularly useful for bolstering a patent position, so that a broader position across a later term of an Australian standard patent is obtained at a time at which future developments that may not infringe the standard patent claims become more likely.

Specifically, the threshold requirement (as currently understood) is met where there is a novel feature (or combination) unless that feature makes “no substantial contribution to the working of the invention as claimed.” This is likely to provide for a broader position than could otherwise be obtained in a standard patent.

Further given the lower threshold, a useful position can be obtained even where the innovation patent has a priority date after the publication of the standard patent (and hence a term extending beyond 8 years from the filing date of the standard patent). Provided that the innovation is novel, the question is only how the invention in the innovation patent claim varies, not how it advances, from the prior art.

For example, for a monoclonal antibody patent, this approach could apply to the protection of CDR and framework sequences that were not captured in a standard patent (i.e. sequences that may have been obvious, or otherwise that may not have been known at the filing date) and that might otherwise be of use to a 3rd party in developing a competing product.

In view of the above, an applicant could now review Australian standard patents that are within about 8 years of expiry and consider bolstering the position by filing innovation patents that cover embodiments not protected. This would effectively obtain protection for a broader position than would otherwise be available over the remaining term of the standard patent.

It also follows from the test as currently understood that it may be possible to extend a patent position by filing an innovation patent well into the term of a given standard patent. One example might be an innovation patent directed to a particular formulation of a claimed compound that has a point of distinction over known formulations that substantially contributes to the working of the formulation. Similarly, accessories and packaging for a product may be separately patentable.

Creating negotiating position

Where a party is sued for patent infringement, obtaining a few innovation patents in the same field can be a valuable negotiating tool to force settlement discussions, or obtain better settlement terms.

When considering the risks of infringement in preparing a product for launch, a number of specific and commercially-valuable variations from the original invention may be obvious but still innovative. These can be patented by the defendant quickly by means of innovation patents, and then offered to the patentee as part of a cross-license. Such a variation may be a combination with another component or substitution of an equivalent component.

Moreover, in the context of a competitive market-place (for example, a generic pharmaceutical), obtaining innovation patents may deter other competitors from launching their own products as those competitors will now have 2 patentees to either negotiate with or navigate around.

Today?s post is by Guest Barista James Cherry, patent attorney with Freehills.

Related posts:

1. Innovation Patents in Australia. The Strongest Patent in the World? Since May
2. Are Patents A Driver of Innovation or Just a Tax? Just in ca
3. Intellectual Property Defense: How to Protect Your Business Against Patent Trolls For both s

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Full post as published by Patent Baristas on June 18, 2009 (boomark / email).