Australian Government’s recommendations for introducing changes to Australia’s patent system

Innovation Patent System to be Abolished

We are writing to advise that, in its 25 August 2017 response to the Productivity Commission’s final report on Intellectual Property Arrangements (December 2016), the Australian Government has supported the recommendation to abolish Australia’s second tier Innovation Patent System [Response to Recommendation 8.1 refers].

IP Australia’s news release of the same day indicates that it plans to “[r]elease exposure draft legislation later in 2017, for public comment on the phasing out of the innovation patent system, the plant breeder’s rights recommendation and most trade mark recommendations.”

Inventive Step test to be Strengthened

Coupled with abolition of Innovation Patents (which are characterised by a lower threshold for inventiveness), and notwithstanding that further public consultation is to be undertaken on detail of the legislative provisions, the Australian government will also be giving effect to the following recommendations:

  1. More clearly align the inventive step test in Australia, with the test for obviousness before the European Patent Office [Response to Recommendation 7.1 refers]; and
  2. Require applicants to identify in the technical features of the invention in the claims that give rise to novelty and non-obviousness [Response to Recommendation 7.2 refers].

Although it is likely that the inventive step changes may take effect subsequent to abolition of the Innovation patent, delayed examination (when the strengthened inventive step test is likely to be applied) will mean that many applicants will be caught by both changes, to their potential disadvantage.

Courses of Action

Given the possibility that applications for Innovation patents may be phased out in the latter part of 2017, we recommend that you give immediate consideration to the following courses of action (depending upon your particular circumstances):

Applicants of unexpired Provisional Patent Applications

A. Preparing and filing a pre-emptive application for an Innovation patent, either directly by association with the pending provisional application or by way of a divisional application filed out of an immediately filed standard patent application (where the invention has been sufficiently developed to the applicant’s satisfaction).

Applicants of unexamined Standard Patent Applications

B. Immediately filing a pre-emptive application for an Innovation patent by division from the pending standard patent application, and carefully considering the timing of requesting official examination of the standard.

Applicants of PCT International Patent Applications in the international phase

C. Immediately filing a pre-emptive application for an Innovation patent by division from the pending International application, and carefully considering the timing of national phase entry in Australia and requesting official examination of the standard upon such entry.


It is important that a filing strategy appropriate to your particular commercial circumstances is adopted. We would be pleased to discuss this development of such a strategy further with you, as required.