Key points:
- A certified innovation patent is one effective, fast and relatively inexpensive option for deterring copycats and competitors
- Avoid selling or disclosing your invention until after patent protection has been sought
- 25 August 2021 is last possible filing date for new non-divisional, Australian innovation patent applications
Glass Outlet is a Brisbane based company that is recognised as a leader in supply of glass and aluminium fencing, balustrading and aluminium screening systems.
When Richard Van Lieshout from Glass Outlet was faced with the challenge of considering earthing of spigots that hold glass fence panels to comply with updated electrical safety rules, the idea of the spigot insulators was born. Earthing reduces the risk of an electrical shock should there be an electrical fault however costs for earthing of spigots is generally high. Richard and his team developed the idea of the spigot insulator from the ground up by using a non-conductive sleeving mechanism that would not require existing spigots to be replaced and would instead utilise existing metal spigots while still providing the desired function of insulation.
Richard and his team sought assistance from Andy Mukherji at MBIP who prepared a patent specification for the spigot insulator and applied for a divisional innovation patent for the insulator. After the initial patent filing date, Glass Outlet started selling the invention and it wasn’t long before a flattering copycat emerged. The innovation patent was certified and became enforceable in a matter of a few weeks with broad claim scope. Glass Outlet approached the proprietors of the copycat product and it didn’t take long for the proprietors to stop the sale of their product.
Despite the lower threshold for validity, innovation patents can prove to be a very powerful tool for patent owners. Challenges to the validity of a patent are often made by an alleged infringer to avoid a finding of patent infringement. The lower threshold for validity makes innovation patents difficult to invalidate and can therefore provide broad and enforceable protection to patent owners as was the case with the innovation patent owned by Glass Outlet. It follows that to maximise the strength of patent protection in Australia, clients should consider filing for innovation patent protection either in place of, or in addition to, standard patent protection.
The Australian innovation patent is on the verge of being phased out with effect from 26 August 2021. If you have any questions relating to innovation or standard patents, please contact us.
