Category: Utility Models

Australia Phasing Out Innovation Patents (Utility Models)

A few months ago, I posted about the Australian Government’s announcement of its intention to phase out the innovation patent.  On the 26th February this year, the relevant Act received Royal Assent, and from 26th August 2021 applicants will no longer be able to file Australian innovation patents.

 

Utility Models as an Intellectual Property Right

The Australian innovation patent is a form of intellectual property (IP) right, often referred to in other jurisdictions as a utility model.

Utility models are similar to standard patents in that they provide the owner with an exclusive right to stop others from using an invention.  However, they have a relatively lower threshold for patentability and offer a corresponding lesser level of protection.

Typically, a utility model will differ from a patent in the following ways:

  • Patentability: whilst novelty of the invention is still required, inventive step / non-obviousness typically has a lower threshold or is not required at all
  • Term of Protection: shorter than a patent, usually 7 to 10 years, depending on the jurisdiction
  • Registration: often simpler & faster, because many patent offices do not perform substantive examination prior to registration
  • Costs: utility models are cheaper to both obtain and maintain than patents
  • Subject Matter Qualification: in certain jurisdictions, utility models can only be obtained for certain technologies, and for products but not for processes

Being easier, quicker and cheaper to obtain, utility models are often sought to protect incremental innovations.  They are well suited for small and medium sized enterprises (SMEs) that make minor improvements or adaptations to existing technologies.

 

Why is Australia Phasing Out the Innovation Patent?

Recent studies have shown that the innovation patent has failed to achieve its intended purpose.

SMEs and individual inventors have not fully embraced the system, often being one-time users only and not maintaining these IP rights for their full term.  The desired incentivisation of research and development within these groups has not been observed either.

Rather, the system has provided a mechanism that enables big business to stifle the innovation of the smaller players.  The costs of the system have been disproportionally borne by the smaller entities, to a net cost to Australian businesses of AUD 11m annually, whilst the larger entities have realised the benefits.

 

How is IP Australia Continuing to Support SMEs?

The decision to phase out the innovation patent has been driven, in part, by the commitment to ensure the Australian IP system continues to meet the needs of SMEs.

There a number of other resources and initiatives currently available and also being introduced to ensure that SMEs remain supported.  These include:

  • SME Case Management: the availability of a dedicated case manager to support SMEs through the application process for both national and international filings
  • SME Fast Track: a mechanism to maintain the speedier prosecution process associated with the innovation patent, by requesting accelerated examination of a standard patent (usually 12 months) within eight weeks (typical of the former IP right)
  • SME Dedicated Outreach Program: a program of events, webinars and networks to provide educational services to support IP strategy for the entire business lifecycle
  • SME Online Portal: offering 24/7 support and advice, including an IP portfolio management tool

 

Innovation and Utility Models in New Zealand

A few years ago, New Zealand began formally exploring the introduction of a similar type of intellectual property right, referred to as an advancement patent.  However, the bill did not proceed past its first reading and is currently not being pursued.

New Zealand’s patent law landscape has changed significantly over recent years with the enactment of the Patents Act 2013.  Under the previous 1953 Act, the requirement for patentability in New Zealand had a relatively lower threshold than that found in many other global jurisdictions.

The 2013 Act brought this requirement into line with other territories, requiring absolute novelty, as well as examination for inventive step.  This allows New Zealand entities to compete and operate on a level playing field internationally, as well as attracting partnerships and investment globally, by providing a legislative framework that is comparable to other global jurisdictions.

Removing the lower threshold for patentability, however, may have negatively impacted upon SMEs, in that they might no longer be encouraged to invest in the incremental development of technology, as the return on investment would likely be realised over a much longer time period when now following the slower, standard patent route.

The New Zealand Advancement patent was designed to address these concerns by learning from the experiences of utility models elsewhere, including the Australian innovation patent.  The experiences overseas, however, have shown that utility models often do not function as intended, and this may be one reason why the New Zealand Advancement patent was not pursued.

 

Support for SMEs in New Zealand

Aotearoa has its own established innovation agency, Callaghan Innovation, that provides a single point of contact for businesses, supporting them at all stages of their innovation journey, with initiatives including:

  • A comprehensive network to access experts for advice, mentoring, partnering or access to technology
  • Research & Development services to take technologies and products from concept to commercial reality
  • Innovation skills delivered through a series of programmes and workshops designed to increase the pace of innovation and scale businesses
  • R&D Funding – including various grant programmes as well as guidance on R&D tax incentives
  • Scale-Up NZ – an online portal and ecosystem to connect New Zealand companies, investors, commercial hubs and multinationals

The utility model may not have taken hold in Australasia, but by learning from the experiences of others and delivering proactive support to businesses, the prospects for continued and leading innovation here are looking positive.

Alistair Curson

 

References

AJ Park. (2014, September). New Zealand’s new Patents Act 2013: The key differences between the Patents Act 1953 and the new Act. Retrieved March 05, 2020, from https://www.ajpark.com/assets/Uploads/New-Zealands-new-Patents-Act-2013-The-key-differences-between-the-Patents-Act-1953-and-the-new-Act.pdf

Curson A. (2019, October 15). “The Australian Government Seeks to Phase Out Innovation Patents (Utility Models)”. Retrieved March 05, 2020, from: http://adcpatentsearch.co.nz/IP_Analytics_NZ/?p=249

Dixon, G. (2018, April 6). Private Member’s Bill proposes second-tier New Zealand “advancement patent”. Retrieved March 05, 2020, from https://www.shelstonip.com/news/private-members-bill-proposes-second-tier-new-zealand-advancement-patent/

Gray, E., Watts, R., Scott, R. (2018, April 26). An advancement in name alone? Retrieved March 05, 2020, from https://www.simpsongrierson.com/articles/2018/an-advancement-in-name-alone

IP Australia. (2016, May 30). “Examination of a standard patent”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/patents/applying-patent/standard-patent-application-process/examination-standard-patent

IP Australia. (2019, September 16). “Innovation patents harm small business innovation”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/innovation-patents-harm-small-business-innovation

IP Australia. (2019). “Innovation patents harm small business innovation”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/sites/default/files/innovation_patent_fact_sheet_2019.pdf

IP Australia. (2020, February 27). “Innovation patent to be phased out, and other changes to IP legislation”. Retrieved March 05, 2020, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/innovation-patent-be-phased-out-and-other-changes-ip-legislation

IP Australia. (2020, March 03). Types of patents. Retrieved March 05, 2020, from https://www.ipaustralia.gov.au/patents/understanding-patents/types-patents

Lucas, J. Rothwell, C. (2018, April 11). Second-tier patent system proposed for New Zealand. Retrieved March 05, 2020, from http://www.jaws.co.nz/about-us/media/article/second-tier-patent-system-proposed-for-new-zealand

Nash, S. (2018, August 10). New strategic direction for small business. Retrieved March 05, 2020, from https://www.beehive.govt.nz/release/new-strategic-direction-small-business

New Zealand Government. “Callaghan Innovation: New Zealand’s Innovation Agency”. Retrieved March 06, from: https://www.callaghaninnovation.govt.nz/

Parmar, P. (2018, April 5). Patents (Advancement Patents) Amendment Bill. Retrieved March 05, 2020, from https://www.parliament.nz/en/pb/bills-and-laws/bills-proposed-laws/document/BILL_77945/patents-advancement-patents-amendment-bill

Parmar, P. (2018, April 6). Bill to introduce second-tier patent system drawn. Retrieved March 05, 2020, from https://www.national.org.nz/bill_to_introduce_second_tier_patent_system_drawn

Summerfield, M. (2018, April 10). With Second-Tier Patent Rights in Retreat in Australia, Are They Making an ‘Advancement’ in New Zealand? Retrieved March 05, 2020, from https://blog.patentology.com.au/2018/04/with-second-tier-patent-rights-in.html

Summerfield, M. (2018, July 10). A Brief History of the Australian Innovation Patent. Retrieved March 05, 2020, from https://blog.patentology.com.au/2018/07/a-brief-history-of-australian.html

Weickmann & Weickmann. “Patents and Utility Models”. Retrieved March 05, 2020, from: https://www.weickmann.de/en/activity-areas/patents-and-utility-models/

World Intellectual Property Organisation. Protecting Innovations by Utility Models. Retrieved March 05, 2020, from http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm

The Australian Government Seeks to Phase Out Innovation Patents (Utility Models)

Last month the Australian Government announced that it was seeking to phase out the Australian innovation patent.  The grounds for this decision were that the innovation patent had failed to achieve its intended purpose.

 

Utility Models as an Intellectual Property Right

The Australian innovation patent is a form of intellectual property (IP) right, often referred to in other jurisdictions as a utility model.

Utility models are similar to standard patents in that they provide for the owner an exclusive right to stop others from using an invention.  However, they have a lower threshold for patentability and offer a corresponding lesser level of protection.

Typically, a utility model will differ from a patent in the following ways:

  1. Patentability: whilst novelty of the invention is still required, inventive step / non-obviousness typically has a lower threshold or is not required at all
  2. Term of Protection: shorter than a patent, usually 7 to 10 years, depending on the jurisdiction
  3. Registration: often simpler & faster, because many patent offices do not perform substantive examination prior to registration
  4. Costs: utility models are cheaper to both obtain and maintain than patents
  5. Subject Matter Qualification: in certain jurisdictions, utility models can only be obtained for certain technologies, and for products but not for processes.

Being easier, quicker and cheaper to obtain, utility models are often sought to protect incremental innovations.  They are well suited for small and medium sized enterprises (SMEs) that make minor improvements or adaptations to existing products.

 

The Australian Experience

The Australian innovation patent has been available since 2001.  It was introduced to replace the previous “petty patent” system.  While having some similarities with a utility model, the “petty patent” required the same level of inventive step as a standard patent.

The introduction of the innovation patent introduced an IP right with a lower requirement for inventiveness, thereby offering protection for innovations that would not otherwise qualify for full patent protection.

Recent studies have shown, however, that the innovation patent has not had the desired effect, especially with respect to SMEs and individual inventors.  These players have not fully embraced the system, often being one-time users, and not maintaining these rights for their full life.  The intended incentivisation of research and development within these groups was not observed either.

Rather, the system had provided a mechanism that enabled big business to stifle the innovation of the smaller players.  The costs of the system were disproportionally borne by the smaller entities, to a net cost to Australian businesses of AUD 11m annually, whilst the larger entities realised the benefits.

 

Wider Criticism and Global Experiences

Criticisms of the innovation patent have been raised over the years, and are often reflected in experiences of utility models within other jurisdictions.  Whereas the intention behind the utility model as an IP right is well founded, it is not often utilised as intended.  For example:

The threshold for what qualifies as an improvement to a technology can be too low.  The lower standards for obtaining IP right protection can actually inhibit innovation and competition.

Substantive examination is often optional.  This can create uncertainty for third parties within the patent landscape, as to the validity of the claims and in determining whether there is freedom-to-operate.  On the flip side, this provides a strategic advantage to the owner of the utility model, as their competitors may have to invest significant analytical resource to answering these questions themselves.

The overall strategic use of utility models is a further criticism of the system, in particular by those organisations with the resources to target the competition with the intention of stifling the competitors’ activities.  The larger player can file “patent thickets”, a dense set of utility models with claims that are difficult to invalidate, that surround a competitor’s own product.  The intention is to inhibit the competitor’s further development of their product and their overall freedom-to-operate.  This can be particularly effective against small competitors or those who otherwise lack the resources to defend a case.

Such tactics make it increasingly difficult for smaller players to compete effectively with the larger players, with the knock-on effect of eroding confidence and investment in SME innovation, stifling the business activities of the very entities these types of IP right are intended to support.

 

Trends in Aotearoa and Our Other Trading Partners

Last year (5th April 2018) New Zealand began formally exploring the introduction of a similar type of intellectual property right, referred to as an advancement patent.  The bill was negative (failed / withdrawn) at its first reading on 8th August, and is currently not being pursued.

It is interesting to note recent developments in China over the past two years, with respect to updates to their utility model system.  In particular there has been an increase in the level of evaluation of novelty, enablement, support, and subject matter qualification during formal examination.

Utility models are a useful and important part of the suite of IP rights.  However, experience shows that they are not often used as intended.  In a number of jurisdictions, they are currently being explored, tested and revised.

Alistair Curson

 

References

Dixon, G. (2018, April 6). Private Member’s Bill proposes second-tier New Zealand “advancement patent”. Retrieved October 01, 2019, from https://www.shelstonip.com/news/private-members-bill-proposes-second-tier-new-zealand-advancement-patent/

Gajewski D. (2019, July 28). “Utility Model Examination in China is Quietly Changing”. Retrieved October 03, 2019, from: https://www.ipwatchdog.com/2019/07/28/utility-model-examination-china-quietly-changing/id=111451/

Gray, E., Watts, R., Scott, R. (2018, April 26). An advancement in name alone? Retrieved October 01, 2019, from https://www.simpsongrierson.com/articles/2018/an-advancement-in-name-alone

IP Australia. (2016, May 30). Types of patents. Retrieved October 01, 2019, from https://www.ipaustralia.gov.au/patents/understanding-patents/types-patents

IP Australia. (2019). “Innovation patents harm small business innovation”. Retrieved October 01, 2019, from: https://www.ipaustralia.gov.au/sites/default/files/innovation_patent_fact_sheet_2019.pdf

IP Australia. “Innovation patents harm small business innovation”. Retrieved October 01, 2019, from: https://www.ipaustralia.gov.au/about-us/news-and-community/news/innovation-patents-harm-small-business-innovation

Lucas, J. Rothwell, C. (2018, April 11). Second-tier patent system proposed for New Zealand. Retrieved October 01, 2019, from http://www.jaws.co.nz/about-us/media/article/second-tier-patent-system-proposed-for-new-zealand

Nash, S. (2018, August 10). New strategic direction for small business. Retrieved October 01, 2019, from https://www.beehive.govt.nz/release/new-strategic-direction-small-business

Parmar, P. (2018, April 5). Patents (Advancement Patents) Amendment Bill. Retrieved October 01, 2019, from https://www.parliament.nz/en/pb/bills-and-laws/bills-proposed-laws/document/BILL_77945/patents-advancement-patents-amendment-bill

Parmar, P. (2018, April 6). Bill to introduce second-tier patent system drawn. Retrieved October 01, 2019, from https://www.national.org.nz/bill_to_introduce_second_tier_patent_system_drawn

Summerfield, M. (2018, April 10). With Second-Tier Patent Rights in Retreat in Australia, Are They Making an ‘Advancement’ in New Zealand? Retrieved October 01, 2019, from https://blog.patentology.com.au/2018/04/with-second-tier-patent-rights-in.html

Summerfield, M. (2018, July 10). A Brief History of the Australian Innovation Patent. Retrieved October 01, 2019, from https://blog.patentology.com.au/2018/07/a-brief-history-of-australian.html

Weickmann & Weickmann. “Patents and Utility Models”. Retrieved October 07, 2019, from: https://www.weickmann.de/en/activity-areas/patents-and-utility-models/

World Intellectual Property Organisation. Protecting Innovations by Utility Models. Retrieved October 01, 2019, from http://www.wipo.int/sme/en/ip_business/utility_models/utility_models.htm