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Innovation patents and SMEs

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IP experts Spruson and Ferguson examine what are innovation patents and why SMEs should be aware of them. Brief Overview of the Innovation Patent System The Australian patents legislation provides for standard patents as well as a second tier patent called an "innovation patent".  Innovation patents were introduced as a means by which it is possible to obtain patent protection for inventions that might not display a sufficient degree of inventiveness to merit standard patent protection or for inventions with an anticipated short commercial lifetime. While innovation patents provide the same exclusive rights as standard patents they have a shorter term, namely eight years as opposed to the 20 years of standard patents.  An innovation patent is granted after only a formalities check (i.e., there is no substantive examination) and typically within a matter of weeks after filing.  A granted innovation patent, however, can only be enforced once it has been certified after post-grant substantive examination. Substantive examination may be requested at any time during the life of an innovation patent and may be made by the patentee or any interested third party. Unlike standard patents, substantive examination of an innovation patent typically commences within a few months of an examination request having been made.  The deadline for overcoming any objections raised by a patent examiner is also far shorter than in the case of standard patents.  As a result an innovation patent can provide a very rapid route to rights that can be enforced against alleged infringers. Where a standard patent requires that an invention must involve an "inventive step", an innovation patent must display an "innovative step".  To display an innovative step an invention must vary from the prior art (i.e., existing information in the public domain) in a way that makes a substantial contribution to the working of the claimed invention.  Establishing an innovative step is normally a lower hurdle to cross than establishing the requisite inventive step for standard patents.  In fact, recent case law has indicated that it does not matter whether features that distinguish the invention from the prior art are well-known or obvious to a person skilled in the art (that is a person familiar with the relevant field of technology).  All that is required is for at least one distinguishing feature of the claimed invention to make a substantial contribution, being a contribution that is "real" or "of substance", to the manner in which the claimed device or process works. Why should an SME consider innovation patent protection? Firstly, an SME can defer the costs associated with substantive patent examination by delaying examination until an invention has shown commercial success or the patentee has become aware of possible infringing activities by third parties.  This is unlike a standard patent where the costs associated with substantive examination must be incurred before a standard patent will be granted. As an innovative step is normally a lower standard than an inventive step, an SME can protect its improvements to existing inventions more easily against copying by competitors. Further, as an innovation patent can be granted and certified within a relative short period of time, it is possible to have patent rights which can be enforced against third parties within a relative short period of time after filing a patent application. In short, obtaining an innovation patent is a quick and efficient manner for an SME to secure enforceable rights for inventions which may not qualify for standard patent protection. André Meyer is an associate at Spruson & Ferguson Patent and Trade Mark Attorneys

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