Unlike a standard patent, an inventive step is not required for an innovation patent. Rather, it is sufficient if the invention is novel and possess an innovative step. Thus, an innovation patent can provide valuable protection for lower level or incremental inventions that would not meet the inventive step test.
On 30 June 2009, the Full Federal Court of Australia handed down a judgement upholding the test formulated by Justice Gyles in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (2008) for innovative step.
Delnorth is the owner of three innovation patents for elastically-bendable posts made from sheet spring steel, with various additional features such as marker holes. Delnorth sued Dura-Post, alleging that Dura-Post’s steel flex post infringed its patents. In a cross-claim, Dura-Post alleged that Delnorth’s patents were invalid for a number of reasons, including for lack of novelty. While Justice Gyles rejected all of Dura-Post’s arguments, he found that some claims in two of Delnorth’s patents were invalid for want of an innovative step.
On appeal, Dura-Post challenged Justice Gyles’s finding that claims of the patents that were not found to be invalid included an innovative step. In rejecting Dura-Post’s arguments, the Full Court confirmed that when considering innovative step, the Court must take into account: (i) the invention as claimed, (ii) the level of skill of a person skilled in the relevant art, (iii) the common general knowledge as it existed in Australia before the invention, and (iv) whether the invention as claimed only varies from the prior art in ways that make no substantial contribution to the working of the invention.
Thus, when assessing innovative step, the Court must compare the claimed invention with any prior art disclosure and identify whether any variation between the invention and the prior art makes a substantial contribution to the working of the invention. Obviousness does not come into the analysis. Where the difference contributes to the working of the invention then it is entitled to protection, whether or not, or even if, it is obvious.
The Full Court also affirmed Justice Gyles’s view that “substantial” in this context means “real” or “of substance”.
This decision confirms the approach that likely will be taken by the Court in assessing whether an innovation patent involves an innovative step, and reiterates the value of innovation patents for lower level or incremental inventions that would not meet the inventive step test.
Grace Period Filings in Australia
A judgement in Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd was rendered by the Full Federal Court of Australia on 7 July 2009, overturning a decision by the Federal Court regarding the proper interpretation of regulation 2.2 (1A) of the Patents Act, which deals with the 12-month grace period afforded for self prior publication. In the earlier decision, the Court held that the grace period could not be relied upon where a divisional application was filed outside the grace period, even though it claimed priority from a parent application that was filed within the grace period.
On appeal, the Full Court unanimously reversed the decision of Justice Stone, confirming the generally held view that the 12-month grace period (with reference to a divisional application) is calculated as 12-months prior to the filing date of the parent application.
The Full Court’s decision confirms a commonsense approach to the divisional application process in those cases where there has been a publication by the applicant which, while within the period of 12-months prior to the filing of the parent application, is at a date earlier than 12-months prior to the date of the filing of the divisional application.