Innovative inventions? Obviously!

Australian law provides for a two-tiered patent system. The first tier is the standard patent, where, as in most countries, the described invention needs to meet at least the minimum requirements of novelty and inventiveness in order to be granted. The second tier is the innovation patent system, which was introduced in 2001 as a tool to provide accessible yet effective protection for inventions that may not qualify for protection under the standard system (ie, so-called “lower-level” inventions). Instead of an “inventive step” requirement, it is necessary only that the claimed invention have an “innovative step”.

In terms of patenting strategy, innovation patents not only are useful to protect those incremental inventions that cannot be protected under the standard system, but can also be wielded as a powerful tool by the patentee. When faced with an allegedly infringing product of a competitor, the innovation patent can be granted, certified and enforced within a relatively short timeframe. Importantly, if filed as a divisional from a standard patent, the innovation patent may contain claims that are drafted after careful consideration of the infringing product. For the innovation patentee, this gives greater opportunity to ensure that the infringement is captured within the scope of the innovation claims. The task then lies with the allegedly infringing party to seek revocation of the innovation patent. However, it is becoming increasingly clear that unless without evidence of clear prior art which unquestionably destroys the novelty of the innovation patent claims, innovation patents are difficult to dispose of.

Although innovative step has been a part of the Patent Act for some years, until recently there had been no real judicial consideration of where the practical difference lay between “inventive” and “innovative”. Until now, practitioners and users of the innovation patent system have only had the guidance of the actual wording of the Patents Act:

an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would…only vary from the (prior art base) in ways that make no substantial contribution to the working of the invention.

With the recent decision of Justice Gyles in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd ([2008] FCA 1225), which considered issues of infringement and validity of three innovation patents for flexible roadside posts, it has been confirmed that the innovative step requirement does in fact present a lesser burden of patentability to the patent applicant than the inventive step requirement.

In assessing whether there has been an innovative step, the court noted that the focus is not on the degree or kind of variation from the prior art base. Rather, the question is whether the invention varies from the prior art base only in ways that make no substantial contribution to the working of the invention – that is, the variation from the prior art base “may be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step”.

In the present case, it was found that the feature of flexible sheet steel, in light of prior art defining flexible PVC, made a substantial contribution to the working of the claimed roadside post, and hence the required innovative step threshold was met. An additional feature of a marker hole was also considered to make a “real contribution which is of substance to the working of the invention”. Under the standard patent system, a feature which is no more than a mere substitution of one material for another would almost certainly be found to be obvious. However, under the innovation system, a claimed invention can be obvious and yet still legitimately be awarded a patent which can then actively be used to enforce the patentee's rights.

Therefore, the innovation patent is proving to be a remarkably robust tool which those seeking to enforce patent rights in Australia should carefully consider when planning and implementing their intellectual asset strategy, regardless of whether their invention is lower level.

Carol Kane
Email: [email protected]
Tel: +61 8 9325 4463

This is an Insight article, written by a selected partner as part of IAM's co-published content. Read more on Insight

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