Is an Innovation Patent the right choice for you?

An Innovation Patent, a construct unique to Australia, may be the answer to your cash flow challenges, still achieving your Intellectual Property (IP) protection requirements.

IP protection is a non-negotiable for any aspiring company with vision and belief in its products and services.

The two types of patents granted in Australia are the ‘standard’ patent and the ‘innovation’ patent.

Standard patent

When you think patent, it is typically the ‘standard’ patent you’re thinking of, found not only in Australia but globally. A patent gives you the legally enforceable right to commercially exploit an invention for the life of the patent, a right that is granted for any device, substance, method or process that is new, inventive and useful.

A patent gives you the most comprehensive protection over your invention for a period of 20 years (25 for pharmaceutical inventions). However, the application process can take up to several years and its costs are significant.

Innovation patent

In comparison, an innovation patent is relatively inexpensive but it only lasts up to 8 years. The Innovation Patent is a construct that provides protection for new developments where the invention may be for relatively minor improvements or variations on what has previously been known. It is designed to protect inventions that do not meet the inventive threshold required for standard patents.

What is right for you?

In order to make an informed decision you must understand the different choices and the level of protection that is achievable and right for your particular circumstances. To compare the two kinds of patents, follow the below guiding principles.

Standard patent Innovation patent
Your invention must be: New, useful and involve an inventive step, something previously unknown. New, useful and involve an innovative step e.g. relatively minor improvements or variations on what has previously been known.
The process will take: Approximately six months, to several years Approximately one month for grant. Six months for examination if you make a request.
The application should include: A title, description, any number of claims, drawings (if applicable), an abstract and forms. A title, description, up to five claims, drawings (if applicable), an abstract and forms.
A patent is granted if: The application is examined and found to satisfy the relevant requirements of the Patents Act 1990. The application satisfies formality requirements.

(note: a ‘granted’ innovation patent cannot be enforced unless examined).

Examination is: Mandatory. The relevant requirements of the Patents Act 1990 must be met before a patent is granted. It can only be requested by the applicant. Optional. Examination can be requested by you or anyone else.
Certification: N/A Is given if the innovation patent complies with the relevant requirements of the Patents Act 1990 in examination. Only after certification can the patent be enforced.
Publication in the Australian Official Journal of Patents: 18 months from earliest priority date and again at acceptance. At grant and again at certification.
Protection period: Up to 20 years if annual fees are paid (or up to 25 years for pharmaceuticals). Up to eight years if annual fees are paid.
How much does it cost? Visit IP Australia’s website for more information. If you engage a patent attorney, ask about the patent attorney’s fees first. Compared to a standard patent, it is relatively inexpensive.

Visit IP Australia’s website for more information. If you engage a patent attorney, ask about the patent attorney’s fees first.

After the patent is granted, can the patent owner enforce the patent against infringers? Yes. No. If the owner of an innovation patent seeks to enforce it against an infringer, the patent first has to be examined (i.e. investigated to ensure that it meets all the requirements for a patent).
When would a patent applicant consider this type of patent? When the product, process or invention had a longer product life cycle of up to 20 years.

When you seek an investor to invest in your innovation, who requires robust patent protection.

When the product, process or invention had a short product life cycle of up to 8 years.

When the invention does not meet the inventive step requirement, but does meet the innovative step requirement.

What are the drawbacks to this type of patent? The process of applying for and having a standard patent examined can take two to six years, or sometimes longer. As this type of patent is not usually examined, it is not as valuable as a standard patent. Its value may be improved by requesting examination, but as the duration of the patent is 8 years instead of 20, it will always have a lesser value.

Confused? Well, it is not an easy decision and the choices you make will have an immediate impact not only on the level of protection granted to your patent but e.g. the value you are creating for your business. Never consider IP protection as a mere expense to business! Any level of protection, any intellectual property right granted is to be considered an asset to your business that creates value.

You may also consider filing a provisional application or seeking international protection.

Contact one of our IP specialists to understand the choices available to you and best possible outcome and protection for your business.