What are secondary indicators of inventiveness, and how useful are they in overcoming inventive step rejections?


An invention should meet certain criteria to be a “patentable invention[s] for the purposes of a standard patent”[1], including: (a) being a manner of manufacture within the meaning of section 6 of the Statute of Monopolies[2], (b) being novel and involving an inventive step when compared with the prior art base as it existed before the priority date of that claim[3], (c) being useful[4], and (d) not having been secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person[5].

Assessing inventive step

In terms of inventive step, the Patents Act defines[6] that an invention is taken to involve an inventive step unless it would have been obvious to a person skilled in the art (PSA) in light of the common general knowledge (CGK) before the priority date of the relevant claim when considered alone or together with prior art information[7].

The test for whether an invention is obvious is to ask whether it would have been a matter of routine to proceed to the claimed invention, i.e., “…whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”[8] The High Court in Aktiebolaget Hässle v Alphapharm Pty Ltd[9] approved this approach, as well as that taken in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd,[10] of asking whether the PSA would be directly led as a matter of course to try what was claimed in the expectation that it might well produce a useful or desired result.[11] ​​​​​​​Other formulations of the test for inventive step include asking whether the claimed invention is one of: a technical equivalent; a workshop improvement; an obvious selection; an obvious special inducement; or an obvious combination of features of CGK.[12]

Secondary indicators of inventiveness

An aspect of assessing inventive step may be whether there are secondary indicators[13] or “signposts” of inventive step (although the overarching question of whether or not the claimed invention is obvious still needs to be addressed).[14] Such secondary indicators of inventive step may include:​​​​​​​

  • A long-felt but unmet need / Failure of others, i.e., where other inventors have also tried to solve the need/problem and not succeeded, which could suggest the invention is not obvious;
  • Complexity of work, i.e., where the work undertaken by an inventor in order to produce an invention was particularly complex, and not readily carried out, which could indicate that it was not a matter of routine, and therefore not obvious;
  • Copying of the invention, i.e., where a third party copies the invention in preference to the prior art, which could be indicative of an inventive step (including, for example, seeking a licence); and
  • Commercial success, i.e., where a product is very commercially successful, if it was obvious to invent, then other competitors likely would have already developed it, and the failure of others to develop a solution to the same problem could indicate inventiveness.

It has long been recognised that secondary considerations “[have] a role to play in a case concerning an inventive step”[15], and that Australian courts “should be slow to ignore secondary evidence”, although the weight of such evidence will vary.[16]

In the Patent Office proceeding TPI Enterprises Ltd v Tasmanian Alkaloids Pty Ltd[17], the parties made submissions in relation to secondary indicators of inventive step. In particular, the Applicant (Tasmanian Alkaloids) referred to the failure to identify a high codeine poppy in a particular study which identified the top1 poppy, and a 12 year delay between the development of the top1 poppy and the poppy of the claimed invention, despite the long felt desire for such a poppy and 3 research groups seeking to achieve this goal. TPI submitted that there was no long felt commercial need for a high codeine poppy, referring to the evidence of one of their experts that there “is comparatively little demand in the global licit opiate industry”, reflected in the continuing production of most codeine from morphine at the priority date. Notwithstanding this evidence, the Hearing Officer was satisfied on the Applicant’s evidence that a high codeine poppy was a highly desired outcome, and concluded that “to the extent that consideration of the long lack of progress and long felt desire for a high codeine poppy are useful as secondary indicators, they support the presence of an inventive step.”[18] 

The secondary nature of these indicators is due at least in part to the fact that there may be other reasons explaining, for example, commercial success, unrelated to the inventiveness of the product. Commercial success might be because of packaging or advertising and not due to the invention itself. According, when relying on secondary indicators, it is preferable to supply supporting evidence which is relevant to the analysis.

Further, during examination[19], Examiners do not have access to evidence from the PSA.  They must therefore put themselves ‘in the shoes of the skilled worker’ and make their own assessment of what the notional skilled worker was likely to have done at the priority date, based on their own knowledge. Supporting evidence of secondary indicators is important in these circumstances. For example, if evidence of immediate commercial success coupled with evidence of a long-felt want is of relevance, it would be useful to file evidence demonstrating that the success derives from the technical features of the invention and not from other influences (e.g., selling techniques or advertising).

Closing comments

When assessing inventive step, the primary consideration is answering the question of whether or not the claimed invention is obvious. However, identifying secondary indicators of inventive step, if relevant, can potentially tip the scales in the Applicant’s favour and assist in overcoming an inventive step rejection. Secondary indicators themselves can neither establish the existence of inventive step nor replace the inventive step assessment methodology, and the probative weight of these signposts will vary from case to case.

When prosecuting patent applications involving tricky inventive step issues, obtaining advice from an experienced practitioner is critical. At Spruson & Ferguson, we have a number of highly experienced attorneys who can assist in prosecuting your patent applications.

[1] s18 of the Patents Act 1990 (Patents Act)
[2] s18(a)
[3] s18(b)(i) and (ii)
[4] s18(c)
[5] or the patentee’s or nominated person’s predecessor in title to the invention; s18(d)
[6] s7(2) of the Patents Act
[7] comprising: (a) any single piece of prior art information; or (b) a combination of any 2 or more pieces of prior art information that the skilled person could be reasonably expected to have combined; s7(3)
[8] Wellcome Foundation Ltd v V.R. Laboratories (Aust.) Pty Ltd [1981] HCA 12; 148 CLR 262 at 286.
[9] [2002] HCA 59; 212 CLR 411 at [50]-[53]; the “matter of routine” approach.
[10] [1970] RPC 157 at 187
[11] Known as the “Cripps question”
[12] See Examiner’s Manual at Tests for inventive step
[13] Also known as “secondary indicia”, or “secondary evidence”.
[14] Elconnex Pty Ltd v Gerard Industries (1993) AIPC 90-984 at page 39, 337
[15] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21
[16] Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21; (2007) 235 CLR 173 at [116]
[17] [2018] APO 8
[18] at [105]
[19] See Examiner’s Manual at Overview of the inventive step requirement

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