Today’s article looks at the life and practicalities of the Australian Innovation Patent system.

Filing

An innovation application can also be filed as a Paris Convention application, for example as an application claiming priority from a US provisional or non provisional utility application, or as a stand alone application, thus establishing its own priority date, filing date and term. This is particularly important where the intention is to extend the patent position as described above.

An innovation application may also be filed as a divisional application from a national phase or Convention application. Indeed this is where they tend to find application in the protection of biotech and pharmaceutical inventions.

Formalities check

A formalities check must be undertaken for every innovation patent application after filing.
The formalities check involves ensuring that the administrative requirements for filing an application have been complied with and involves a brief review of the subject matter to ensure that the application does not claim non-patentable subject matter.

If the application passes the formalities check, the Patent Office is required to accept the application. If it does not, the Patent Office will issue an adverse report and provide for 2 months from the date of the report for compliance, after which the application will lapse in the event of non compliance. Where the objection relates to non patentable subject matter, a hearing may be set down.

Exclusions

Relevant to biotech and some pharmaceutical inventions, humans, plants, animals, or biological processes for their generation are expressly recited in the Act as being non patentable subject matter. Otherwise, the full subject matter range — as per Australian standard patents — is available including:

  • pharmaceutical compositions
  • methods of treatment, diagnosis or surgery on living body or otherwise
  • compound synthesis and screening
  • research tools
  • diagnostics

Acceptance and grant

After formalities check, in most cases acceptance and grant will occur practically simultaneously. Upon acceptance, the application is granted by sealing a patent deed and published.  Publication at grant is the first level of publication. Publication at this level is important because it then puts a 3rd party on notice that it can request for the granted patent to be examined, hence opening the door for revocation by the Patent Office or possible opposition (see below).  If an application does not pass the formality check, it will lapse and neither the application nor the invention claimed within it will be published.

Innovation patents, upon grant, are registered. The Register is in two parts, one dealing with standard patents and the other dealing with innovation patents, but is the one “book”. As per below, virtually no rights (an exception appears to be licensing) can be exercised by either the patentee (infringement action) or other parties (revocation or opposition) unless the innovation patent has been certified.

Term

The term of an innovation patent is 8 years from its filing date.  Annuities are payable from the 2nd anniversary. Fees increase to match standard patents from the 5th anniversary.

Where an innovation patent is granted on a divisional application, the term of the innovation patent is calculated from the filing date of the parent patent. So for example, where the parent patent is an Australian national phase application, the term of the innovation patent as a divisional of the National phase application is 8 years from the PCT international filing date.

Examination

(a) Process

Certification of a granted innovation patent is required before infringement proceedings can be brought. Certification requires examination. Only a granted innovation patent can be examined.

The Patent Office must carry out examination if requested to do so by the patentee or a third party. If a third party requests examination, a copy of each examination report is to be sent to that party, as well as the patentee.

The Patent Office may also carry out examination of its own volition.

Generally, examination is to be completed by the latest of 6 months from the date of issuing the first examination report although later dates may apply in special circumstances.

If an adverse report is still relevant in relation to an innovation patent when the period for examination expires, the patent will cease. The Patent Office may also revoke the patent in these circumstances, but this action will not be taken without a hearing on the matter.

(b) Grounds

The grounds of revocation of an innovation patent for invalidity are generally the same as those for examination of a standard patent, except that obviousness is not considered and innovative step is (see below).  The novelty test is the same as for standard patents, i.e. absolute novelty.

As to the conduct of examination, any doubts that the Patent Office may have in relation to grounds other than novelty and innovative step must be resolved in favor of the patentee. For novelty and innovative step, the Patent Office must be satisfied that there are no lawful grounds of objection.

Certification

Certification – involving the issuance of a “certificate of examination” – is the outcome of a favorable examination finding. By this time, grounds for revocation have been found not to exist or to have been removed. If not removed, certification is not possible and the patent must be revoked.
Certification is published and this is particularly important for both the patentee and any potential infringer because:
the patentee can now begin infringement proceedings
a potential infringer may now oppose or seek revocation of the innovation patent.

Opposition and Re-examination

Once an innovation patent has been certified it can be opposed at any time – no time limit applies.  The re-examination procedure is substantially the same as for innovation patents as it is for standard patents.

Amendment

The practice and procedure concerning amendments for innovation patents is substantially the same as for standard patents, except as follows:

  • amendments must fall within the scope of the certified claims
  • an amendment to convert an innovation patent application to a standard application is allowable if the amendment is filed before grant of the innovation patent application.  It is not allowable if the amendment has been filed after the innovation patent has granted.
  • an amendment to convert an innovation patent application to a standard application is not allowable if:  (a)  the innovation patent application is a divisional of an earlier filed innovation patent; and (b) the divisional was filed after grant of the earlier filed innovation patent.
  • proposed amendments to the complete specification cannot be allowed until after grant, with the exception of amendments proposed in response to a formalities check.

What is an innovative step?

Prior art for testing innovative step

The prior art for testing for innovative step is the same as that used for testing for novelty. In particular, the following information may be used:

  • information made publicly available – in Australia or otherwise- in a single document or through doing a single act;
  • information made publicly available – in Australia or otherwise- in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in Australia would treat them as a single source of that information.

The 12 month grace period applies the same as for standard patents.

Test for innovative step

S 7(4) of the Patents Act sets forth the test:  an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in Australia before the priority date of the relevant claim, only vary from the kinds of prior art information in ways that make no substantial contribution to the working of the invention.

To date there has been only one Australian court decision that has considered how the test for innovative step is to be applied. That decision is Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 (13 August 2008).  This is a decision of a trial court. It has not been appealed or followed. In the decision, the Court held that the test involves two separate and discrete steps as follows:

  • one first identifies the particular differences between the invention as claimed, and the prior art. This inquiry is to determine how the invention varies from the relevant prior art information. Indeed, if there were no differences, the patent would not be novel and the question of innovative step would not arise.
  • the question to be asked, apparently entirely in isolation from any further consideration of or comparison with the prior art information, is whether the integer that gives the claim novelty makes ‘no substantial contribution’ to the working of the invention as claimed. Thus, the focus is on the working of the invention … not the degree or kind of variation from the prior art information. And certainly not on, for example, whether the variation actually means the invention represents an ‘improvement’ or ‘advance’ in some relevant sense compared to what is disclosed in the prior art information.

Some other points from the Delnorth decision are as follows:

  • the test of innovative step is different in kind, not just in degree, to the test of obviousness.
  • an invention claimed in an innovation patent may be valid even if it is obvious. The converse may also be the case.
  • the idea behind s7(4) (see above) seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection.
  • where the point of differentiation does contribute to the working of the invention it is entitled to protection, whether or not it is obvious.
  • looking at the history of s7(4), the legislative intention seems to have been to introduce into Australia a test based on the requirement that the difference between the invention and what is known is sufficient unless it does makes no substantial contribution to the working of the thing.
  • the focus of s7(4) is upon working of the invention as claimed, not to the degree or kind of variation from the prior art. In other words, the variation from the kind of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.
  • ‘substantial’ means ‘real’ or of ‘substance’, as contrasted to distinctions without a real difference.

Today’s post is by Guest Barista James Cherry, an Australian patent attorney with Freehills.

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