What Constitutes An Innovative Step?

On 13 August 2008, the Federal Court handed down the first substantive decision on what constitutes an innovative step in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225.

By way of background, in 2001 Innovation Patents were introduced into the patent landscape in Australia. The innovation patent was to sit along side standard patents, and was designed to allow for patents which were considered to have an "innovative step" as opposed to an "inventive step". Australian courts have long considered and defined what constitutes an inventive step, however, the introduction of the innovation patent has resulted in some lack of surety as, until now, there was no definition or guidance from the courts of what constitutes an "innovative step".

In the Delnorth case, Justice Gyles, in considering innovative step, stated that where the point of differentiation (the novel feature) does contribute to the working of the invention, then it is entitled to protection. His Honour discussed a three step test for considering innovative step, after firstly noting that there is no need to search for some particular advance in the art to be describe as an innovative step:

1. Compare the invention as claimed with the prior art base and determine the differences;
2. Look at the differences through the eyes of a person skilled in the relevant art in light of the common general knowledge;
3. Ask whether the invention as claimed only varies from the prior art in ways that make no substantial contribution to the working of the invention.

In relation the meaning of "make no substantial contribution to the working of the invention", His Honour's view was that "'substantial' in this context means 'real' or 'of substance' as contrasted with distinctions without a real difference."

Applying the test in practice, in this case a claim to a sheet spring steel construction of a guide post and to a fibre reinforced synthetic material guide post, were both found to have an innovative step over a plastic post, whereas a surface coating applied to the post was found not to have any functional purpose and hence not constitute an innovative step. Full text of the decision can be found here.