In many jurisdictions it is becoming increasingly difficult to get IP protection for inventions that seem relatively simple or incremental, yet which represent significant investment for the commercialising entity. However, Australia has two regimes that may provide a strategically useful solution. The first is via the Innovation Patent system and the second via the route of Registered Designs.
With both systems grant or registration is automatic provided the basic filing formalities have been met. However, they cannot be enforced until they are examined and certified. This means that preliminary rights can be established at a relatively low cost and examination and prosecution costs can then be deferred until the applicant has a need to enforce the properties against third parties.
Innovation Patent System
The Australian innovation patent system is a second tier patent system specifically targeted at providing protection for developments that may fall in the gap between standard utility patents and registered designs. While the novelty requirements are the same as standard patents, in that the invention/innovation must not have been disclosed in any form in any place prior to the priority date, the inventiveness threshold is intended to be lower. To this end, an innovation patent requires that the invention be novel and include an "innovative step". The test for innovative step is that the difference between the claimed invention and the prior art base must make a substantial contribution to the working of the claimed invention. While there has been little useful judicial interpretation as to exactly what this means, case studies of two sample innovation patent cases that have passed certification by IP Australia can be found at the following link. The cases relate to a surfboard carrying sling and a hand warming glove with integral drink cooler sleeve.
While the two examples mentioned above relate to simple devices, it is important to note that unlike many utility model regimes, innovation patents are not limited to device claims and can cover the same subject matter as standard patents which includes methods, processes and compositions. While there is a limit of five claims, provided the unity of invention requirements are met, a single application could include for example, an apparatus claim, a method or process claim and a product of process claim.
Registered Designs
Unlike the majority of jurisdictions around the world, the functionality of a design is not in itself a bar to registration in Australia. This makes the system ideal for protecting products or components of products that may have minimal aesthetic content, yet represent significant design investment value. There is still the requirement that the design be "new and distinctive" over the prior art. However, the mere fact that the design consists of, or includes, key elements which are configured to perform a certain function, will not preclude it from registration so long as the overall design meets the basic novelty and distinctiveness requirements.
Having said this, it is important to note that Australia Design Legislation currently has "right of repair" provisions which provide a defence to infringement relating to products sold and used as spare parts. As such designs for component products that could be used as spare parts are registrable and enforceable against unauthorised use as original equipment forming part of a complex product, but cannot be enforced against products falling within the scope of the design that are intended for use as spare parts.
Grace Period for Patents
As indicated in the table above, the Australian innovation patent system, like the standard utility patent system, includes a grace period provision. Accordingly, if a potential applicant has recently disclosed a product that may be suited to an innovation patent application, provided the disclosure was by the applicant and was within the last 12 months, there may still be an opportunity for valid protection.
Further Information
It will be appreciated that the specific requirements of each regime are reasonably complex and this is not intended to be a comprehensive overview. However, if you would like any additional information and/or an assessment of a particular case or product/process in mind, please address your enquiries to Caroline Bommer.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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