Australian Innovation Patent Phase Out set to begin in 2021

UPDATEAfter a long wait, the Intellectual Property Laws Amendments (Productivity Commission Response Part 2 and Other Measures) Bill 2019 received Royal Assent on 26 February 2020 and will now be known as Intellectual Property Laws Amendments (Productivity Commission Response Part 2 and Other Measures) Act 2020 (Cth).

While the Act introduces a suite of amendments to the Patents Act 1990 (Cth), the most anticipated and sweeping changes relate to the innovation patent system. Specifically, Schedule 1, Part 2 of the Act, which commences on 26 August 2021, sets out the terms for the dismantling of the much-maligned (at least by the Productivity Commission) Innovation Patent system in Australia. As a result, the last day for applicants to file new, non-divisional, innovation patent applications will be 25 August 2021.

New innovation patent applications will still be able to be filed after 25 August 2021 only if they are based on complete applications filed prior to 26 August 2021 (i.e. having an effective filing date earlier than 26 August 2021) either in the form of a divisional application or by converting a pending standard patent application. This includes the ability to file innovation patent applications from Patent Cooperation Treaty (PCT) applications filed before 26 August 2021.

While this is sure to be disappointing news for many small and medium business in Australia, the Federal Opposition did manage to negotiate a condition be worked into the legislation in order for their support of the Bill. The legislation was amended to include a provision for a statutory review to be commenced no later than three months from the commencement of the Act. This statutory review will assess the accessibility of patents for small and medium sized enterprises.

The review, which must be completed within 12 months of commencement, will examine the cost of applications for patents, the processing times of patents, advice provided by the Australian Government relating to the patent application process and the awareness of the patent application process.

In summary:

  • 25 August 2021 – last possible filing date for new non-divisional, innovation patent applications; and
  • 26 August 2021 – no longer possible to file new innovation patent applications, other than divisional applications based on complete applications filed on or before 25 August 2021

 

We will be working with our clients to ensure they do not miss out on the opportunity to file innovation patent applications.

Feel free to contact us if you have any questions about the changes to the Australian innovation patent system.

Jeremy Moller

Jeremy Moller, Senior Associate

 



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