As reported in an earlier news alert, in August 2008 a single judge of the Federal Court of Australia handed down his decision on the first case to consider the requirement for an “innovative step” for innovation patents.
An innovation patent is a relatively new form of Australian patent introduced in 2001, and is intended to provide protection for “lower level inventions”. Whilst innovation patents provide the same exclusive rights as standard patents, albeit for a shorter term of 8 years, there is no requirement for an inventive step (i.e., a lack of obviousness). Instead, the requirement for an inventive step has been replaced with a requirement for an innovative step, which is intended to have a lower inventive threshold than an inventive step.
Before the single judge of the Federal Court, Spruson & Ferguson Lawyers was successful in enforcing three innovation patents for its client, against a major competitor. The innovation patents relate to elastically bendable roadside posts formed of sheet spring steel. The decision was appealed and earlier this week the appeal was dismissed by the Full Federal Court.
The Full Court approved the two-step test for innovative step set out by the trial judge in his judgment. The two-step test involves:
- Comparing the invention as claimed, on a claim-by-claim basis, with each prior art disclosure separately, to determine any difference(s) between the claimed invention and the prior art disclosure.
- Looking at the difference(s) through the eyes of a person skilled in the relevant art and assessing whether the invention as claimed in the relevant claim only varies from the prior art disclosure in ways that make no substantial contribution to the working of the invention.
The Full Court confirmed that the “working of the invention” is the working of the device or process that is the subject of the relevant claim and that the assessment is a factual inquiry from the perspective of a person skilled in the art possessing the relevant common general knowledge.
The Full Court also confirmed the trial judge’s position that it does not matter whether features that distinguish the invention from the prior art are features that were well known, or obvious to a person skilled in the art. All that is required is for at least one distinguishing feature of the claimed invention to make a substantial contribution, being a contribution that is “real” or “of substance”, to the manner in which the device or process, the subject of the claim, works.
This decision of the Full Court confirms how valuable an innovation patent can be, not only in circumstances where a standard patent might be open to attack on the basis of lack of inventive step (i.e., obviousness), but also where potential infringement is identified and a standard patent application is delayed in routine prosecution or opposition. In this case, an innovation patent may be divided out, with infringement proceedings able to be commenced in a matter of months.