In the first case seeking to challenge an innovation patent on the basis of lack of innovative step, Spruson & Ferguson’s client, Delnorth successfully defended three innovation patents for elastically bendable roadside posts (such as guide posts) formed of sheet spring steel and successfully sued arch competitor Dura-Post for infringement of these innovation patents.
The case is very important because it is the first to decide what an innovative step is under the amendments made to the Patents Act 1990 (Cth) which introduced the innovation patent as a new type of patent in 2001 intended to provide patent protection for “lower level” inventions.
The only difference in the patentability requirements between an innovation patent and a standard patent is that an innovation patent requires an innovative step, whereas a standard patent requires an inventive step. The Australian Federal Parliament intended for an innovative step to require a lower inventive threshold than that required for an inventive step.
In the judgment, the trial judge accepted Spruson & Ferguson’s interpretation of the proper construction of s 7(4) of the Patents Act 1990 (Cth) which sets out the requirement for innovative step. For the time being, pending any appeal by Dura-Post, the law on innovative step may be summarised as follows:
- An innovative step will be found if the invention which is claimed differs from the prior art base such that any difference identified in the invention as claimed makes a substantial contribution to the working of that invention. The prior art base includes any single prior publication or public use, no matter how obscure and irrespective of whether or not the prior art formed part of common general knowledge or could be reasonably expected to have been ascertained, understood and regarded as relevant. This means that where a point of differentiation between a claim of the innovation patent and a piece of prior art contributes in a substantial manner to the working of the invention as claimed in the innovation patent, the invention will receive protection even if the difference is obvious to anyone skilled in the field.
- In assessing whether there is an innovative step the focus is on the contribution to the working of the invention as claimed and not the degree or kind of variation from the prior art. Even though the variation from the prior art might be slight, if a substantial contribution is made to the working of the invention there is an innovative step. The Court was of the view that “substantial” means “real” or “of substance” as contrasted with distinctions without a real difference.
Subject to any foreshadowed appeal, the Court’s decision now provides guidance on the previous uncharted territory of what constitutes an innovative step. The Court, has made it quite clear that it does not matter how obvious or clear to a skilled addressee certain features defined in an innovation patent were, a piece of prior art must disclose each of the features making a substantial contribution to the working of the invention as claimed in the innovation patent before it will impact on the question of innovative step.
The filing of innovation patents should thus be considered in circumstances where it is believed that patent protection would not otherwise be available as a result of an invention only differing from prior art by virtue of well known features. Consideration should also be given to filing an innovation patent application in addition to a standard patent application (by way of a divisional application) for commercially important inventions that may be subject to attack on inventive step.