We have had a number of new Clients who have come to us after “self-filing” their own innovation patent application. In all of these cases – the Clients’ rights have been compromised by failure to understand the legal and technical requirement for a patent specification, failure to understand the patent system and the associated deadlines.
As a Patent Attorney, it is alarming to see Australian inventors simply giving their inventions away via the innovation patent system without any hope of achieving enforceable and commercially useful patent rights. So, to help any budding inventors out there – here are some reasons why you should beware of innovation patents and perhaps consider filing a provisional patent application or standard patent application instead.
Innovation patents typically publish in less than 3 months – this means whatever information you have provided in your patent specification will become open to public inspection. In contrast, the contents of a standard patent specification may remain unpublished for up to 18 months.
The early publication of an innovation patent specification may become a problem if you need to withdraw or redraft the patent specification as the published innovation patent specification may be considered to be prior art to any subsequently filed patent application.
Like all complete patent applications, under the recent updates to the Australian Patents Act, you cannot add new information to an innovation patent after filing. This means that if you have made any errors or not correctly drafted the patent you may not be able to correct these defects.
Now, given that innovation patents are published quickly – you may be left in the situation where you cannot amend your patent and, if you do file a new patent application including new information – your now published application may be cited as prior art and therefore make it difficult to establish novelty and innovative step. Obviously, this is a quite a predicament and sadly many Australian inventors are simply giving their inventions away.
Once accepted, you cannot convert an innovation patent to a standard patent or provisional patent. Because innovation patents are accepted so quickly (in a matter of weeks) there is only a very limited time to convert your application. This can be a problem if you decide to convert your application to a provisional patent or wish to seek standard patent protection (although this can be achieved via filing a PCT claiming priority from the innovation patent and then entering national phase in Australia – but this is very costly).
Within a few months of your innovation patent application being filed (provided some simple formality requirements are met) you will received your patent certificate. However, an innovation patent is not enforceable until certified by way of examination.
The quick granting of innovation patents provides many inventors will a false sense of patent rights and a feeling that “all is ok”. However, in every case we have seen (where the patent has been self-prepared) – the granted innovation patent typically has serious issues, and may not be enforceable. Again, most problematically, because the inventor was provided with a “certificate” most inventors delay seeking assistance from a Patent Attorney before it is too late to rescue their patent rights to the invention.
In most cases, we recommend Clients to file provisional patents at first instance as this allows the Client to further develop the invention over the initial 12 month period before deciding to file a complete patent application in Australia, an international patent application or overseas patent applications. Of course, a provisional patent is not appropriate in all circumstances such as when you have publically disclosed (made, sold, offer for sale or otherwise published) your invention prior to filing your patent.
Innovation patents can be very useful in a patent portfolio and in some cases are the preferred (and only way) to protect more incremental type inventions which perhaps would fall short of meeting the requirements for a standard patent. However, if not prepared correctly and in the proper sequence – innovation patents can cause a series of problems that may limit or result in the loss of subsequent patent rights.
Caska IP Patent Attorneys Sydney and Newcastle are here to assist you to successfully protect and commercialise your invention. We expertly guide you to avoid all of the pitfalls above and ensure that your rights are protected in Australia and overseas.