How innovative must an innovation patent be?

In Delnorth v Dura-Post, Gyles J had to decide whether or not innovation patents for (e.g.)

A roadside post comprising an elongate body formed of sheet spring steel and having a longitudinal axis, a transverse axis transverse to said longitudinal axis, a front face and a rear face, said front and rear faces transversely extending generally parallel to said transverse axis, wherein said body is elastically bendable through 90 degrees from an unbent state about said transverse axis.

were valid and infringed.  More detail here and here and here.

Much of the judgment concerns (fairly) routine questions of interpretation.  On the question of validity, however, his Honour had to confront, so far as I’m aware really for the first time, the quality that comprises an innovative step.

For this purpose, s 7(4) of the Patents Act 1990 tells us:

(4)  For the purposes of this Act, 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 as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention.

Gyles J first rejected a submission that the innovation had to be coterminous with the invention as claimed at [47] – [51].  Then, his Honour outlined how the statutory test is to be approached:

52 There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention. It may be that there is a feature of each claim which differs from the prior art base and that could be described as the main difference in each case but that need not be so. Section 7(4), in effect, deems a difference between the invention as claimed and the prior art base as an innovative step unless the conclusion which is set out can be reached. If there is no difference between the claimed invention and the prior art base then, of course, the claimed invention is not novel. (emphasis supplied)

HIs Honour then had to decide what’s a substantial contribution to the working of the (claimed) invention:

53 The phrase “no substantial contribution to the working of the invention” involves quite a different kind of judgment from that involved in determining whether there is an inventive step. Obviousness does not come into the issue. The idea behind it seems to be that a claim which avoids a finding of no novelty because of an integer which makes no substantial contribution to the working of the claimed invention should not receive protection but that, where the point of differentiation does contribute to the working of the invention, then it is entitled to protection, whether or not (even if), it is obvious. Indeed, the proper consideration of s 7(4) is liable to be impeded by traditional thinking about obviousness.

and

59 …. The focus is upon working of the invention (as claimed) not to the degree or kind of variation from the kinds of information set out in s 7(5). In other words, the variation from the kinds of information might be slight but, if a substantial contribution is made to the working of the invention, then there is an innovative step.

That, of course, led to the question what qualifies as ‘substantial” and concluded in this context:

61 In my view the provenance of the phrase “make no substantial contribution to the working of the invention” indicates that “substantial” in this context means “real” or “of substance” as contrasted with distinctions without a real difference. That confirms my impression from construction of the words of the section itself.

Here there was an innovative step.  For example, and at the risk of gross over-simplification, the key point against one citation was that the invention was for a roadside post made of sheet spring steel which would happily spring back into position after being bent flat by a heavy object (such as a car).  The citation, however, was made of plastic.  The fact that the (claimed) invention used sheet spring steel made a substantial contribution to the way it worked:

63 …. Each of the claims involves construction by sheet spring steel. The SupaFlex post is plastic. The materials are quite different, although, no doubt, they each have the same objective. As I have endeavoured to explain, the question is not whether flexible sheet steel is better than flexible PVC – it is certainly different. It cannot be seriously argued that the material sheet spring steel does not make a substantial contribution to the working of the roadside post claimed in each claim.

Other citations failed also.

Finally, at [67] – [76], his Honour reviewed and applied the case law on whether or not a prior act had made the invention publicly available.

Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225 (13 August 2008).  Lid dip, Duncan Bucknell.

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