IP SPOTLIGHT MARCH 2020

T he first article I penned regarding the potential demise of Australia’s innovation patent system was at least as early as the 2016 Productivity Commission report on Australia’s IP Regimes. So the innovation patent system has been in the cross-hairs since at least that time. In reality they were being targeted much earlier, with a stand-alone enquiry into the innovation patent system having been conducted in the years leading up to the 2016 Productivity Commission report. All this despite only having been introduced in 2002.

SENTENCE FOR AUSTRALIA’S INNOVATION PATENT FINALLY HANDED DOWN

THE SENTENCE Despite several false starts since that 2016 Productivity Commission report, the Australian Government has now passed and enacted legislation that will see the phase out of the Australian innovation patent from 26 August 2021. The innovation patent won’t cease to exist at that time, but will rather commence a slow tip-toeing from the Australian intellectual property landscape. – – Existing innovation patents will not be impacted by these latest changes and are entitled to live out their full 8 year term, subject to renewal and other requirements. – – Applications for innovation patents filed before 26 August 2021 will similarly be entitled to live out their full 8 year term, subject to renewal and other requirements. – – Innovation patent applications will continue to be able to be filed as divisional applications from pending standard applications with an effective filing date of earlier than 26 August 2021. – – Standard patent applications pending at 26 August 2021 may be converted to innovation patents (as they may be presently) at that time or thereafter. – – The overarching feature is that whilst you may be able to file, or convert to, an innovation patent after 26 August 2021, the protection afforded by way of that innovation patent will not extend beyond 25 August 2029. THE GOOD F IGHT It has been widely reported that our Institute of Patent & Trade Mark Attorneys had been waging a campaign to retain the innovation patent. Indeed, The key points are as follows:

they were supported by a wide range of small to medium enterprises (SMEs) in this campaign but it ultimately came to (almost) nothing. THE REWARD? The ‘almost’ refers to the recent announcement of several “dedicated support services” for SMEs, including: – – An SME fastrack (which is in fact regular expedited examination of a standard application). – – SME case management. – – An SME portal offering 24/7 support for SMEs. – – An outreach program dedicated to SMEs (an information or education program). EX POST FACTO ANALYS I S The recently enacted legislation also provides that the effectiveness of these measures, and the accessibility of the intellectual property system for SMEs in Australia, will be reviewed by way of a ‘Ministerial Review’ that is required to consider at least the following:

– – Cost – – Processing times – – Advice – – Awareness

Whilst the undertaking to provide such a review is welcome, it will be particularly interesting to see how rigorously the required review is undertaken. At this point it is difficult not to imagine that it runs a real risk of being little more than perfunctory – given the manner in which the innovation patent has been pursued and ultimately killed off.

PETER CAPORN Principal

4 | wrays.com.au