By Michael Buck
IP Australia promotes the Innovation Patent on its website as a relatively fast, inexpensive protection option and goes on to say that It only takes minutes to apply! You can apply online for an innovation patent and if your application passes the formalities check, you will receive your notification of grant usually within a month. Click here to apply online.
As a result of this enthusiastic encouragement, I frequently meet with people who have done exactly what the IP Australia website encourages them to do. They have naively spent a few minutes online filling out IP Australia’s Innovation Lodgement form thinking that doing so will adequately protect their invention.
Unfortunately, in many cases inventors that file their own innovation patent applications have not realised that unless they are very careful they will not secure whatever right to their invention might be available.
People simply don’t realise that once they have filed their innovation patent application it will be granted, but not enforceable, and published within a few weeks. This is because IP Australia will seal, i.e. “grant” an innovation patent even if it only consists of a single sentence of text, so long as the details of the inventor, the applicant and the title of the invention has been provided.
IP Australia won’t, and isn’t required to, advise the applicant that a patent application consisting of only a single drawing, or of only a sentence of text, or that has no patent claims is inadequate and won’t be enforceable. Instead, provided the title, inventor name and applicant details have been correctly provided, IP Australia will seal the patent and send the applicant a Deed of Letters Patent, which the applicant may like to proudly frame and hang in their reception area.
When the patent owner receives the Deed of Letters Patent it comes with a letter from theCommissioner of Patents that points out the limitations of the granted innovation patent.
One very critical limitation is that a granted innovation patent is not enforceable until it has passed a post-grant certification examination.
In my experience, the highlighting of that limitation is often like an invitation to request certification examination. When the innovation patent owner who has only recently lodged the patent application online seeking the promised fast and inexpensive protection option reads that their patent is not enforceable until certified, their immediate reaction is to request certification examination.
As one client who self filed his innovation patent application said to me What’s the point of having a patent that you can’t enforce?. I thought it was just sensible to ask for the certification examination.
I have to say that I agreed he had a valid point.
What happens next is that the innovation patent owner requests certification examination. An Examiner at IP Australia then examines the patent specification that was filed online. Sometimes the patent specification consists of some text that the applicant typed in during the online filing process, rather than uploading a pre-prepared document, since the IP Australia online filing process invites the applicant to do that if they prefer.
The Examiner will then review the patent specification for the invention, including any claims, and send out the Examination report.
Many of the examination reports that I’ve seen for people that have self filed their innovation patent application state that the patent specification is lacking a clear patent claim The patent claims are the part of the patent specification that spell out the exclusionary right being sought. It’s the claims that patent attorneys toil over and which keep them awake at night because each and every word of a patent claim counts.
The report then explains that the applicant has six months to overcome the objections or the innovation patent will be revoked.
It’s at this point that I usually get a call from the owner of the innovation patent asking me how the objections that the patent Examiner has raised might be overcome. The short answer is that unless there’s some decent technical material in the patent specificationthat was originally filed, there probably isn’t much that can be done to rectify the patent while keeping the original priority date.
Under the Patents Act it is possible to amend a patent specification so long as the amendment does not result in anything being claimed that wasn’t in substance disclosed at the time the patent application was originally filed.
For example, if you’ve only described the benefits of your invention, but not its structure and how it operates to produce the benefit, then it’s very unlikely that it will be possible toamend the patent specification to provide patent claims that are based on matter that was in substance disclosed at the time the patent application was filed.
As I write this I’m trying to help an inventor that filed an innovation patent application online for a new kind of building method. He filed a single page diagram as his patent specification with a few explanatory notes around the diagram. IP Australia granted his Innovation Patent Application and so it has now been published on the IP Australia website. The Applicant requested certification examination, received an adverse report, and now I’m trying to determine if there’s sufficient disclosure in the material he filed to glean some worthwhile patent claims and get it through the innovation patent certification examination.
If we can’t get it through the certification examination within the time limit his innovation patent will be revoked. As an alternative we could file a divisional innovation patent application but there would be additional costs and complexities involved in going down that path.
So, whether or not an innovation patent will pass certification examination depends not only on the innovation being new and involving an innovative step but also on how adequate the description of the invention is that you originally filed.
You might have a world beating invention but beware, if you don’t file a solid patent specification you could find yourself with a granted but un-certifiable and un-enforceable innovation patent.