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The critical dates are now known in respect of the Australian Government’s abolition of the second-tier “innovation patent” system: new applications must be filed before 26 August 2021, and all innovation patents will have expired by 26 August 2029. Significantly, existing innovation patent rights (and those applied for over the next 18 months) will not be affected.
The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 finally passed through Australia’s Federal Parliament earlier this month. Our feature article can be found here. The Bill received Royal Assent on 26 February 2020, which in turn establishes two future dates of critical importance. Such dates are the subject of this update.
Giving effect to the Transitional Provisions
The Transitional Provisions allow for the filing of new innovation patents for a further 18 months, and exploitation of the innovation patent system for the best part of the next decade. The Transitional Provisions are broadly summarised as follows:
- The legislation was passed into law (i.e., received the required Royal Assent) on “Date-X” (26 February 2020). For the purposes of filing new innovation patents, it takes effect from “Date-Y” (26 August 2021), which is 18 months from Date-X.
- At any time prior to Date-Y (i.e., before until 26 August 2021), new innovation patent applications can be filed. In other words, nothing changes until the legislation takes effect on 26 August 2021.
- As of Date-Y (26 August 2021), no new innovation patent applications can be validly granted. However, an existing and pending standard patent application (i.e. having a filing date prior to Date-Y) can still be converted into an innovation patent, or can have a divisional innovation patent filed from it.
- With innovation patents having an 8-year term, it will be appreciated that all innovation patents will have expired by “Date-Z” (effectively, Date-Y+8 years, i.e., 26 August 2029).
It’s probably simpler by way of a timeline
“Abolition” versus “phasing out”
“Abolish” is probably too strong a term to describe the changes. Rather, as shown above, the innovation patent system is to be “phased out” over the best part of the next decade. The Government’s original proposal had been for a 12-month commencement window, but this was changed to 18-months in part-exchange for the Opposition’s support in passing the legislation.
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A few months back, we published a SWOT analysis of Australia’s innovation patent. Our conclusion was that the “punishment” (abolition/phasing out) should fit the “crime” (three principal failings, two of which were readily correctable). We think it’s a bit like imposing the death penalty for jaywalking. The Government, accepting the views of the Productivity Commission, clearly saw things the other way!
Now that we know our “Date-X” (26 February 2020), “Date-Y” (26 August 2021) and sunset “Date-Z” (26 August 2029), it’s simply a matter of business-as-usual, subject to the Transitional Provisions summarised above.
“Innovation patent” is thereby destined to remain part of the Australian patent lexicon for the best part of the next decade. The innovation patent system has been fated to die a slow, painful death which, in fairness to the Government, was probably the only equitable way to “abolish” it, once it was established that this was the path it wished to go down.
Authored by Gareth Dixon, PhD and David Hvasanov, PhD