What Constitutes An Innovative Step? Are We Any Closer To Knowing?

This article first appeared in The Watermark Journal Vol 24 No 1 (March 2007)

Innovation patents are a second tier form of patent protection in Australia. A patent monopoly is granted for eight years for globally novel ‘innovations’, an ‘innovation’ being the inclusion of a feature that ‘makes a substantial contribution to the working’ of the product or method. While this legislation remains untested in the Australian Court system, for many inventions which would not qualify as ‘inventive’ it is difficult to determine by what criteria they would qualify as ‘innovative’.

According to section 7(4) of the Patents Act 1990, an invention “is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge……, only vary from the kinds of information… (in the prior art base) in ways that make no substantial contribution to the working of the invention.”

In two Patent Office Opposition Hearings, the Hearing Officer has in each case attempted to apply section 7(4) to determine whether the opposed innovation patents had the requisite level of ‘innovative step’ to be valid.

In Amcor Packaging (Australia) Pty Ltd v Barokes Pty Ltd1, Amcor opposed a patent directed to a “Process for packaging wine in aluminium cans” under several grounds, including lack of innovative step. Amcor alleged that the claimed invention lacked an innovative step in light of a prior art publication, relating to canning of wine, and the common general knowledge.
According to Australian Law, a party alleging invalidity of a patent bears the onus of proof and any doubt on the validity of a patent should be accorded to the benefit of the patentee (Hoffman-LaRoche v New England Biolabs Inc2). The definition of innovative step in section 7(4) of the Act was based on the first half of the novelty test of Dixon J in Griffin v Isaacs3 which states “Where variations from a device previously published consist in matters which make no substantial contributions to the working of the thing or involve no ingenuity or inventive step and the merit of the two things, considered as inventions, is the same, it is impossible to treat the differences as giving novelty”.

Claim 1 of the opposed patent was directed to a process of canning wine, and set out various characteristics of the wine required to be present at canning to prolong the life of the wine in the can, such as maximum levels of free sulfur dioxide (35 ppm), chloride (300 ppm) and sulphates (800 ppm). In addition, the pressure within the can had to be at least 25 psi.

The Hearing Officer dismissed several assertions which involved the importation or sale of chardonnay and cabernet shiraz in cans for lack of clear evidence, and was left to assess innovative step in light of the published article, which described a process for canning wine in a two piece aluminium can, and the common general knowledge. The document disclosed that free sulfur dioxide in the wine should be minimized to a level falling within the claimed invention to reduce can corrosion. The chloride and sulphate levels were described as wine inclusions, but the levels or limits were unspecified. The relevance of chloride and sulfate as having a negative interference effect on the aluminium can, though not expressly stated, was inferable from a chart. The gas pressure within the can was also not specified. The published document was thus silent as to the parameters of chloride, sulphate, and can pressures. According to the Hearing Officer, it had to be determined whether the limitations of chloride, sulphate, and can pressure made a substantial contribution to the working of the invention. The Hearing Officer referred to the stated object of the invention; “to package wine in aluminum cans where the quality of wine does not deteriorate significantly on storage”. It was concluded that the internal can pressure only served to maintain can shape. In relation to the chloride and sulphate levels, the opponent argued that it was the total anion level within the wine that makes a difference to its preservation and not particular levels of each component.

The Hearing Officer took the view that whilst there might be broad rules of thumb in a beverage canning industry, this does not mean that identification of precise parameters underlying the general rule is a superfluous exercise not involving innovative merit. Therefore, the consideration was whether the individual limits specified for chlorine and sulphates failed to make such a contribution.

The prior art document identified 13 chemical parameters in wine whereas the claimed invention particularised 3 out of the 13 parameters and specified their upper limits. The Hearing Officer felt this was a critical point of distinction between the claimed process and the prior art process. In particular, the patentee had chosen at least two constituents from others that were equally capable of having an adverse reaction with the aluminium can, and had determined the upper limits in order to improve the preservation characteristics of the canned wine. In the absence of evidence to the contrary from the opponent, he found that these variations from the prior art were not so trivial as to fail the ‘substantial contribution test’ per Griffin v Isaacs3 and therefore the claimed invention had an innovative step.

In a more recent patent opposition case, The Smith Family et al., v INC Corporation Pty Ltd4, the invention related to a “Thermoformable acoustic sheet” and a method of producing it. One of the stated problems was that the materials used to produce a suitable thermoformable material for under bonnet insulators lack uniformity of air flow resistance, which is required for acoustic absorption performance. According to the specification, the object of the invention was “...to provide a thermoformable acoustic sheet and a method of producing such a sheet that will at least provide a useful alternative”. The specification had five claims, including claim 1 which read as follows:

“A thermoformable acoustic sheet formed by a compressed fibrous web including high melt and adhesive thermoplastic fibres……. to provide a selected air flow resistance of between 275 and 1100 Rayls; wherein the high melt fibres have a melting point above about 220°C, …. and the web of the thermoplastic fibres has a web weight of about 1000 g/m2 or below.”

In assessing whether the claimed invention possessed an innovative step, the Hearing Officer referred to the Revised Explanatory Memorandum5 which accompanied the Patents Amendment (Innovation Patents) Bill 2000, and also to the Patent Examiner’s Manual6 for guidance.

The Revised Explanatory Memorandum suggests that to satisfy the innovative step requirement, an invention must differ from what is already known “in a way that is not merely superficial or peripheral to the invention”. According to the Examiner’s Manual of Practice and Procedure, as to the level of contribution necessary to be substantial it states “…no definitive measure applies and each invention needs to be assessed on its merits given the nature of the invention and the advance over the prior art information”, and that “... it needs to be borne in mind that no feature of a claim which is an inessential feature thereof could possibly make a substantial contribution to the working of the invention defined. Where the claimed invention differs from the prior art information and yet operates in substantially the same way, the feature in which the difference resides is unlikely to be of practical significance to the way the invention works. As a result there would not be a substantial contribution to the working of the invention given the difference and hence no innovative step involved”.

According to the Hearing Officer, any alleged difference over the prior art must have some practical impact on the functionality of the claimed invention in order for the claimed invention to possess an innovative step. Any insignificant variation from the prior art will not render the invention claimed as having an innovative step.

In the present case, the opponents also suggested that the parameters in the claims were just arbitrary values and not sufficient to amount to an innovative step. The Hearing Officer held this to be akin to what Bennett J described as “parameteritus” in Williams Advance Materials v Target Technology7. The Hearing Officer was not persuaded by the submission because the arbitrary parameters were, in his view, the whole point of the invention and, again, the lack of any evidence to show that the features had no material effect, meant there was no option but to dismiss this allegation and hold that the claimed invention had the requisite level of ‘innovative step’.

These cases serve to underline the imperative on the opponent, when challenging the ‘innovative step’ of a claimed invention, to clearly demonstrate that the claimed differences from the prior art do not have a practical impact on the functionality of the invention, as it is not for the applicant to show that they (the differences) do provide an innovative step.


1. Amcor Packaging (Australia) Pty Ltd v Barokes Pty Ltd [2005] APO 56 (12 December 2005).
2. F. Hoffman-La Roche AG v New England Biolabs Inc. [2000] FCA 283.
3. Griffin v Isaacs [1942] AOJP 739 at 740.
4. The Smith Family, MCK Pacific Pty Ltd and Foss Manufacturing Company v I.N.C. Corporation Pty Ltd [2006] APO 3 (24 February 2006).
5. Revised Explanatory Memorandum for Patents Amendment (Innovation Patents) Bill 2000.
6. Patent Examiner’s Manual of Practice and Procedure, Volume 2.
7. Williams Advance Materials v Target Technology [2004] 63 IPR 645.