ACIP REVIEW OF INNOVATION PATENT SYSTEM

Referring to our previous blog dated 13 September 2013, ACIP had been undergoing a review of the Innovation patent system.  On 16 June 2014, ACIP issued the final report on its findings for consideration by the government.  The final report can be found here:

http://www.acip.gov.au/pdfs/ACIP_Final_Report_-_Review_of_the_Innovation_Patent_System.pdf

The report makes somewhat infuriating reading.  The report does not commit to whether the innovation patent system should be retained or abolished.  However, if it is retained, the recommendations are that changes are necessary.

The main recommendations for change are:

1. Making substantive examination of innovation patents compulsory;
2. Restricting patentable subject matter for innovation patents by excluding all methods, processes and           systems;
3. Raising the threshold test for innovative step.

It is hard to argue that item 1 is not a sensible recommendation and would certainly give a degree of certainty and credibility to the system.

Item 2 appears to be trying to be a change based upon tailoring the system to accord with utility model systems in other countries, but the suggestion of excluding ‘systems’ may put this a step too far.

Item 3 is where the main debate lies.  The recommendation is to adopt an ‘old’ inventive step test. Something which is of a lower threshold than the current inventive step test (in order to fulfil the third tier role of the innovation patent), but is higher than the current innovative step.  The problem is that the test proposed brings more uncertainties than certainties to the test.  The test proposed will be a question of obviousness, but obvious in light of what?  The concern is the role that prior art will play in the proposed test.  Prior art will only be considered if it is part of the ‘common general knowledge’.  But that means prior art will have to be proved to be part of the ‘common general knowledge’ in order to be considered.  That, as the past has shown, is beyond the job of an examiner.  Furthermore, that has been the basis for the biggest waste of time and expense in past patent litigation.

Bearing in mind that this final report is merely a recommendation for change and that actual change must come from the government, we must wait and see if anything actually happens in respect of change.

Simon Ellis