Innovation patent system gets a workout

Patent attorneys will be watching closely this week as the legal status of the Federal Government's innovation patents system is tested for the first time in court.

The innovation patents, introduced in May 2001, were intended to encourage investment in Australian R&D by making it easier to protect new ideas.

Inventors were able to obtain an innovation patent without the need for the application to be examined before granting. Examinations were only conducted after granting if a patent were likely to be the subject of litigation, in which case it would be examined and certified.

And while the patents have proved popular, particularly among inventor applicants wanting to save money on patent attorneys, their legal muscle has not yet been tested.

Today, however, Sydney company DataDot Technology is launching a test case to protect its innovation patent on a microdot system intended to deter car thieves.

The company is launching action in the Federal Court claiming a rival company, Alpha Microtech, has infringed its patent by marketing a similar system.

Lawyers hope the court case will answer some questions over the relevance of second-tier patents, which they say effectively bear no legal value unless examined and certified.

Special counsel with patent and trademark attorneys Allens Arthur Robinson, Christopher Bird, said that, like any legal decision, the importance of the test case will depend on what the facts and judgements are.

"It's a very recent development in Australian law and there has been no decided case yet, so this will therefore shed some light on the situation," Bird said.

Central to the difference between innovation and standard patents according to Bird is the lower step required to achieve the patent. While applicants are required to meet the same level of inventiveness, or novelty, as applies to standard patents, they must also include an "innovative step".

"This is determined in a slightly different way and we're waiting to find out how the courts will establish this lower threshold of patent ability," he said. Bird also pointed out that with most innovation patents being prepared by inventor applicants rather than patent attorneys, it was unknown whether they would be sufficient to survive the rigours of a court case.