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Note from August 25 2021, the innovation patent will cease to exist. After this date, you can only file a divisional innovation patent if it is based on a previously filed patent. Read more about this change in our article.

A patent is a set of exclusive rights granted over any device, substance, method or process that is new, inventive and useful (an Invention), for a limited time after a successful application process. Similar to trade marks, it is a registrable right granted by the country of registration. An applicant for a patent has to disclose the substance of the invention, making the information available to the public. Consequently, some inventors make the business decision not to disclose their patents, instead opting to keep their invention confidential as a trade secret.

Over the coming weeks, we will explore the topic of patents and its application process in Australia. Last week, we examined the application process for standard patents. This week, we will look at the application process for innovation patents.

The Application Process For Innovation Patents

Some subject matters are patentable under a standard patent but excluded from an innovation patent. Where innovation patents can be granted, the steps to apply for this patent are similar to those for a standard patent.

The key steps in the application process are:

  • Conduct a search: This establishes whether any Prior Art Base exists which can affect the novelty or innovation of you application. See our article on conducting a search for more information.
  • File an application: You must file an application accompanied by a patent specification. Once you file your application, it is checked to ensure the formality requirements are met. If it is, your innovation patent is granted and published in the official journal. Publication occurs within 1 month.
  • Examination: Similar to standard patents, you must make a request for examination. However, for innovation patents, examination can only occur after the patent is granted (as opposed to standard patents, where examination must occur before the patent is granted). For an innovation patent to be enforceable, it must be examined. There is no time limit to request examination. If examination is requested, an examination report will be issued within 6 months.
  • Certification: If examination is successful, the innovation patent will be certified and published again. You have 6 months to accept certification of your innovation patent. Note that the certification of an innovation patent can be apposed and revoked, subject to application.
  • Maintaining your patent: You must pay an annual fee to maintain your patent. An innovation patent can be renewed for up to eight years.

Note that fees are payable at different stages of the patent process.

Limitation of Rights Under an Innovation Patent

It is important to note that the rights granted under an innovation patent may be limited until it is certified, including:

  • You can make up to 5 claims in an Innovation Patent.
  • Infringement proceedings relying on innovation patents cannot be started unless the patent has been certified. Where an innovation patent is yet to be certified, any threat of infringement made relying on this patent will be considered an unjustified threat.

Conclusion 

There are different avenues and methods to protecting your invention, and securing a patent is one of them. Unfortunately, securing a patent is not a simple or straightforward process. This process can be more complex and lengthy if you are looking to secure your patent in multiple jurisdictions. Our team of IP lawyers and patent attorneys have extensive experience in this area and would be happy to assist with protecting your invention. To speak with a member of our team today, contact LegalVision on 1300 544 755.

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