In 2001, Australia introduced a new form of patent called the innovation patent system. Patents granted under this system have a term of eight years. Significantly, the innovation patent system allows for the grant of patents that would be considered obvious in the US or Europe. Having no obviousness test allows patent holders to exploit what would otherwise be considered a very weak patent.
For a number of years, little litigation had been conducted under the innovation patent system. However, recently the first major case on the innovation patent system has weaved its way on appeal through to our High Court, the highest court in Australia. In December 2009, the High Court refused leave to hear an appeal on the operation of the innovation patent system. As a consequence, the lower decision of the Full Federal Court (Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (No. 2) [2009] FCAFC 93) stands as a very strong precedent for the proposition that no obviousness test applies to our innovation patents. Although there is a requirement for an innovative step to obtain an innovation patent, the Court appears to have confirmed that the threshold for that step is so low as to be almost indistinguishable from the requirement for novelty.
Further, it is likely to be some time before our legislature gets around to considering whether any legislative change is required to increase the threshold for an innovative step and it would further be unlikely that any change would be applied retrospectively.
Given the innovation patent provides the same level of injunctive and damages relief to innovation patent holders as that available to standard patent holders, any patent litigant, and hence any patent holder, needs to seriously consider whether they should supplement their portfolio with a number of (relatively inexpensive) innovation patents. The innovation patent system has attracted much criticism as a result of the low threshold for patentability and, consequently, may eventually be altered or disbanded. However, while it exists in its current format, it presents a great opportunity for the intelligent patent holder to gain a strategic advantage over competitors.
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| Peter Treloar |
Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000
Australia
Tel: +61 2 9777 1111
Fax: +61 2 9241 4666
email@shelstonip.com
www.shelstonip.com