Innovation patents are second tier patents similar to utility models, having a lower threshold for patentability and a relatively short term of eight years compared to standard patents.

A recent appeal court decision confirms that inventions that include features that are known and obvious can still sustain valid innovation patent protection in Australia.

The Decision

  • encourages the filing of applications for innovation patents, as many new products and methods will qualify for innovation patent protection in Australia, and
  • confirms that when faced with an allegation of infringement of an innovation patent, it is difficult to successfully challenge the validity of the innovation patent.

On 30 June 2009, three Judges of the Federal Court handed down their decision in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81. In this decision, their Honours upheld the validity of three innovation patents relating to roadside posts. A consistent feature of the patent claims was the formation of the posts from sheet spring steel so as to make them ‘elastically bendable’ and the specification as filed asserted this to be a development of the invention over the prior art. A similar post formed from laminated sheet spring steel was found in a prior art document and Dura-Post asserted that the claims of the innovation patent were invalid over this prior art document.

However, the patents also claimed in combination with the use of spring steel, a number of other features that were not described in the prior art document:

  1. a marker hole to help install the post at the correct depth
  2. a barb serving to anchor the post into the ground
  3. a tapered end to help with driving the post into the ground
  4. ribs to resist buckling, and
  5. certain specific dimensions.

These additional features were all separately known features of prior art roadside posts made from materials other than sheet spring steel. In issue was whether the threshold for a valid innovation patent of an ‘innovative step’ was satisfied by a spring steel roadside post with any of these features.

The Australian Patents Act 1990 (Cth) provides that an invention is taken to have an innovative step if it has a point of difference over the prior art that makes a ‘substantial contribution to the working of the invention’. Their Honours rejected the contention by Dura-Post that this inquiry involved first identifying the purported advance in the field of the invention and then asking whether the differences between the claims and the prior art make a substantial contribution to that advance. Instead, the Court said that the invention is defined by the claims alone and falls to be determined on a claim by claim basis.

In the context of the claimed roadside post, this meant the question was whether the claimed features (1 to 5 above) made a substantial contribution to the way the roadside post functions. The question was not whether the claimed features contributed to the claimed function of the roadside post of being elastically bendable.

Their Honours therefore affirmed the first instance decision that each of features 1 to 5 above made a substantial contribution to the working of the post and therefore were each sufficiently innovative to sustain valid patent protection.

What does this mean?

The Full Court has confirmed that it is difficult to successfully challenge the validity of an innovation patent on the basis of a lack of innovative step. Even though all of the features of a claim may be known and obvious to combine together, this alone will not invalidate a claim for lack of innovative step. This places the owner of an innovation patent in a powerful position when seeking to assert its patent rights. Combined with the accelerated grant and examination procedure for innovation patents, there should be a strong incentive to file applications for innovation patents.

Overall, the decision of the Full Federal Court confirms that innovation patents are a powerful tool to rapidly obtain and enforce exclusive rights to an invention.

Today’s post is by Guest Baristas Ben Mott, Patent Attorney, Patrick Sands, Senior Associate, Melbourne and Carl Harrap, Senior Associate, of Freehills in Sydney.

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