Complete guide to innovation patents

23-November-2017 Commercial Disputes By Mel Collins

This year has seen many questions arise concerning innovation patents, and more specifically, what they are and how they are used. Here we provide all the answers.

What are innovation patents?
Innovation patents offer protection in the form of rights that are granted to an owner of a product, process or invention that prevents others from making use of, or selling the product, process or invention without the owner’s permission.

What can I protect?
Innovation Patents are often referred to as second tier patents. They are best suited to the protection of simpler inventions.

Streeterlaw solicitor Jamal Kayrouz said with all good ideas or creations that can be copied, it’s important to keep your invention a secret. “There’s nothing worse than losing the opportunity to patent your invention because somebody else has heard it being discussed, and sold or published it in the public arena before you have applied for protection of your product, process or invention,” she said. “You can still talk with business partners or advisors about the invention but ensure they understand that the information is to be kept confidential. We can help you by drafting appropriate confidentiality and non-disclosure agreements.”

What is the difference between the standard patent and an innovation patent?

INNOVATION PATENT STANDARD PATENT
Length of protection 8 years 20 years (or 25 years for pharmaceutical patents)
Threshold requirements Novelty and Innovative step Novelty and Inventive Step
Examination process Examination is optional Examination is compulsory
When patents are granted Not enforceable (unless examined) Enforceable

Solicitors at Streeterlaw have expertise in innovation patents and can assist you in the drafting of your application, including the most effective way of communicating your invention to IP Australia.

Steps to obtain an innovation patent

  1. You can apply for an Innovation Patent through IP Australia, who will provide you with an optional provisional application, which gives you 12 months of initial protection. To obtain initial registration, both a provisional application form and a provisional specification document are required.
  2. In your provisional specification you are required to describe in sufficient detail the technical field of your invention. You should also include whether your invention has been created as a result of problems that you have identified in other products. Your provisional specification should also identify the technical features that you believe are essential to the operation of your invention. Along with the essential features of your invention, you are also required to list the optional features of your invention. You must also include an explanation about how to use your invention so that a layperson can easily reproduce your invention using only your description. Drawings can also be submitted as part of your application.
  3. Your provisional innovation patent will generally be granted within one month of lodging your application.
  4. Before the (provisional) 12-month period runs out, you should complete an application to secure the priority date of your innovation patent registration.
  5. Once an innovation patent application is filed, it undergoes a ‘formalities’ examination, where minor details including the inventor names and/or the formatting of the application must be provided. Once this is completed the innovation patent will be granted.

How can I ensure my innovation patent is enforceable?

When an innovation patent is granted, it is not yet enforceable, however when a standard patent is granted, it is enforceable.

Examination of your innovation patent is optional, however, at any time during the eight-year term of the innovation patent, you can request what is known as certification. This can be achieved through the process of a substantive examination to make your innovation patent enforceable.

What are the benefits of making my patent enforceable?

The certification of your innovation patent can be costly, so you may want to wait until you see that someone is definitely copying you before you apply for enforceability of your innovation patent. The decision will depend upon the specific use and purpose of your innovation patent.

What happens in the certification process of my innovation patent?

IP Australia will assess whether your innovation patent is both novel and has an innovative step:

  • Novelty requires your invention to be new in the context of anything published anywhere in the world before your priority date.

    The priority date is the date your application for an innovation patent was first filed with IP Australia.
  • An innovative step requires that the product, process or invention makes a significant contribution to the working of the invention. An innovative patent can be used to protect the development of an invention even if the base technology of the invention has already been disclosed.This step is much lower (simpler) than what is expected for standard patents, which require an inventive step.

What are the benefits of an innovative patent?

  • Innovation patents are particularly helpful to businesses as they provide them with a relatively inexpensive form of Intellectual Property protection.
  • The process is faster and cheaper than registering a standard patent.
  • For these reasons innovation patents are, on the whole, more typically suited to inventions with a short commercial life span.

Streeterlaw solicitors with expertise in Intellectual Property can assist you by providing case-specific advice in relation to your particular personal and business needs and to help you in your decision to certify your innovation patent. Please call 1300 293 593 or you can email advice@streeterlaw.com.au

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