05 October 2005

More on Utility Models

Talking of the Patent Reform Group, they had a conference at Marks & Clark splendid new palace in Covent Garden last March at which Jon Miles gave a really good talk on Australian innovation patents.

Jon contributed to the debate on IPR talk that I mentioned above and he has kindly authorized me to reproduce his contribution here:

"I gave the talk on the Australian Innovation Patent system at the meeting of the Patent Reform Group in March and so I can comment on this with some assurance - I know less about equivalent or similar systems in other countries.

Since innovation patents were introduced in Australia in 2001 the number granted rose quite sharply (in contrast to their old Petty Patents) but has since levelled off. The average number of petty patent applications between 1998 and 2001 was 576 a year but in the first full year that innovation patents were available (2001/02) this jumped to 1050. It seems to have remained at around 1000 a year ever since, although 2004/05 showed a small increase to 1120.

Bear in mind that the Australian system grants innovation patents without examination or certification; simply on the basis of a correctly completed application and a formalities check. However, these uncertified Innovation Patents cannot be enforced - and neither can they be challenged! This meets the needs of the "vanity patent" - just having the certificate on the wall - and many academics. It is interested that the number of Innovation Patents which are certified (either contemporaneously or some time after initial grant) is much smaller - 180 in 2003/04, 153 in 2004/05.

As to whether innovation patents have met their intended target - increasing protection for SMEs and lone inventors, and for industries with a short life product cycle, they seem to have worked very well. In 2001/02 the percentage of standard patents assigned to companies was 88% as against 12% to individuals. In 2003/04 the percentage for innovation patents was 31% to companies and 69% to individuals. Industries differ too - organic chemicals, pharmaceuticals and medical engineering figure significantly in standard patent applications but don't seem to appear at all as
innovation patents. Instead, we see consumer goods (22% of applications!)
civil engineering, transport and IT - exactly the short-product cycle industries
innovation patents were intended to cover.

Note that, although a patent holder cannot hold both an innovation patent and a standard patent for the same invention it is possible to have both sorts with similar or overlapping claims. This has led to several applications for innovation patents from an ongoing standard patent application, providing quick protection for a particular
commercial use of the invention (useful if the standard application has been
opposed).

The concept of an "innovative step" with a lower threshold than the "inventive step" needed for a standard patent seems to have caused no problems so far although there have been few court cases as yet. In at least one case the innovation was found to be valid and the infringing parties were ordered to stop selling, using or distributing the offending articles; in another the innovation patent holder was granted an injunction restraining the sale, hire or disposal of the item in dispute pending determination - so they can carry real weight. In another case, disclosed prior art rendered the innovation patent invalid and the Court ordered it be revoked. The Australian government is currently considering a proposal to allow enforcement proceedings for innovation patents to be brought within the jurisdiction of the Magistrates Courts, at least initially, which could result in lower costs.

I hope this is useful. I can post my original PowerPoint presentation if this would be of interest; also you can follow this link for the latest Australian government review paper.

Jon Miles"


Jon has also sent me his PowerPoint slides. I have not yet worked out how to get them onto this blog but when I next update the IP/it Update website I shall put it up there. I already have a few much more modest bits and pieces of my own on the topic that need to be sorted out. I'll put the links through to this blog. It will probably be after the weekend.

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