ACIP Releases Options Paper on Review of the Innovation Patent System

In a previous blog, we reported that ACIP had initiated a review of the innovation patent system.

Further to the review, ACIP have now issued an options paper and have invited public submissions on the paper by 4 October 2013. The options paper can be viewed here.

At its heart, the innovation patent system offers a second-tier patent enforcement regime to the standard patent system. The innovation patent requires the satisfaction of an 'innovation step' test, which is considered and intended to be a lower threshold than the 'inventive step' test required for a standard patent. The trade-off for this lower threshold test being that the maximum term of an innovation patent is less than that for a standard patent – 8 years as opposed to 20 years. However, there have been criticisms that, while for a shorter term, the innovation patent offers the same level of infringement enforcement as a standard patent, although is much harder to counter due to its lower validity threshold requirements.

The innovation patent has been criticised as being overly generous to patent owners and open to abuse. The innovation patent is much more encompassing in terms of what subject matter it can provide patent protection for when compared with other second-tier patent mechanisms offered in some other countries (notably utility models provided in Germany, China, Japan and Korea).

In recent changes, the inventive step threshold for standard patents was raised in the ‘Raising the Bar’ amendments to the Patents Act. As a consequence, there is now a perception that the gap between the inventive step test and the innovative step test has widened.

The paper points to a variety of options available to consider. Interesting proposals are mentioned around possible limitations upon the monopoly afforded to the owner of an innovation patent or a reduction to the available remedies for infringement of an innovation patent.

The option which has generated most support is in somehow raising the innovative step threshold. However, opinions vary on what that should be or how it could be implemented, if the innovative step is still to be a lower threshold than the inventive step. There have been suggestions that the innovative step should just be the same as inventive step. Fortunately, ACIP have remarked that this would present a ludicrous outcome and would make the innovation patent a redundant system, in which case it would be more viable to simply abolish the innovation patent system.

ACIP intends to finalise and present its recommendations to the Australian Government later this year. It will be interesting to see what they do come up with. Having said that, regardless of the final recommendations, it is up to the Government as to whether anything is done and they have been dismissive in the past.

by Simon Ellis