An obstacle for many companies trying to obtain a Standard Patent is that they must show an “inventive step” – that is, that their invention would not have been “obvious” to a notional skilled worker in the field. By contrast, the test for a valid Innovation Patent is that there is merely a “substantial contribution to the working of the invention”, even if that contribution was obvious.
The practical effect of this is that small, obvious improvements to known machinery, processes, compositions, software, devices, business methods, etc., can now be protected, whereas previously they could not.
Another advantage of Innovation Patents is their speed of approval. Applications for Standard Patents can take on average two to four years to be processed to grant. The lengthy processing time can be particularly problematic if an infringement is suspected because legal action cannot be taken until a patent is granted. The processing of Innovation Patents by contrast is fast tracked by the Patent Office and grant occurs typically in less than three months.
Innovation Patent owners need to be aware, however, that an infringement action cannot be initiated, or even threatened, without first obtaining a “certification” of their patent. During the certification process, the patent is offi cially examined by the Patent Office to determine if it meets all of the patentability requirements for an Innovation Patent. If it does, the Innovation Patent is certified. If it doesn’t, the Innovation Patent will be revoked.
It is advisable to seek certification of an Innovation Patent shortly after grant, so that any litigation can be quickly initiated, should the need arise. Conversely, if your competitor holds an Innovation Patent with the potential to adversely affect your business, the first question you need to ask is, “Has the Innovation Patent been certified?” If it hasn’t, it may not be valid. A patent attorney can provide an opinion on validity.
A downside of Innovation Patents is their considerably shorter term (eight years) as compared with Standard Patents (20 years). However, Innovation Patents also cost less. Another trade off is that the number of patent claims in an Innovation Patent is limited to five, whereas Standard Patents have no claim limit.
Typically, applications for Innovation Patents are filed in the following circumstances:
1. Where the invention comprises a small advance, which is not suffi ciently inventive to support a Standard Patent.
2. Where the invention is expected to have only a limited commercial life.
3. Where a Standard Patent application is pending and there is a possible infringement of the invention, a corresponding Innovation Patent application can be filed which will proceed to grant quickly, thereby enabling earlier initiation of infringement proceedings.
4. Where a Standard Patent application is rejected by the Patent Office on the grounds that it is an obvious invention, the application can be converted to one for an Innovation Patent which is more likely to be granted.
A word of warning, though: like any new law, the Innovation Patents system is yet to be rigorously tested in the courts. Some uncertainty remains as to the minimum level of innovation that is required for a valid Innovation Patent. Again, a patent attorney can provide advice on this issue.
Notwithstanding the above, since Innovation Patents were introduced in 2001, there has been a steady increase in the number of Innovation Patents granted. While Standard Patents are clearly still the patent of choice, Innovation Patents are becoming a viable alternative for many patent applicants.
Michelle Hedges is a registered Patent and Trade Mark Attorney and partner of Phillips Ormonde & Fitzpatrick. She specialises in patents in the Mining and Materials-related fields.