The Beginning of the End of the Innovation Patent

IP Australia have released a proposal to amend the Patents Act 1990 to require innovation patents to pass an inventive step test as required for standard patents. The deadline for public comment on the proposal is 25 October 2012.

The Advisory Council on Intellectual Property (ACIP) were charged in February 2011 with investigating the effectiveness of the innovation patent system.   An issues paper, submissions and a number of public forums have been held since then, but ACIP’s review is still underway.  However, the Australian Government have short-circuited this process and taken action immedately to modify the innovation patent system ahead of the major “Raising the Bar” changes to the Patents Act set to come in force in April 2013.

In light of this Full Federal Court decision (relating to innovative step), the Australian government are now concerned that the changes to the Patents Act in April 2013 (“raising the bar” to bring a higher threshold for standard patents) will lead to a disparity between the inventive step/innovative step threshold for standardand  innovation patents.

The consultation paper may be found here. The deadline for submissions on the paper is 5pm on 25 October 2012.

Transitional Provisions

It is anticipated that the amendments will commence on proclamation or 6 months from Royal Assent, whichever is later.  At this stage, it appears that the transitional provisions will mean the changes will apply to innovation patent applications filed on or after commencement as well as innovation patents granted which have been filed on or after commencement.

The result of these proposed changes and transitional provisions may see a flood of innovation patent application filings and examinations prior to commencement.