The test for innovative step confirmed
Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd  FCAFC 81 (30 June 2009)
The test for innovative step has been considered for the first time by the Full Federal Court, which confirmed that the threshold requirement for innovative step is lower than that which is required for inventive step (that is, for standard patents). In essence, a roadside post of metal with a notch was considered to be innovative over similar plastic posts. The Court also confirmed that common general knowledge cannot be combined with prior art in assessing innovative step.
Facts of the case
This case was on appeal from a single judge of the Federal Court, and concerned three separate innovation patents relating to a ”Roadside Post”, owned by Delnorth Pty Ltd (Delnorth).
In the judgement at first instance (Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd  FCA 1225 (13 August 2008)), Gyles J found that all three patents were valid, except for claims 1 and 2 of each of Patents 2 and 3, which were lacking in innovative step, and further that Dura-Post (Aust) Pty Ltd (Dura- Post) had infringed at least claim 1 of Delnorth’s Patent 1 (See the December 2008 issue of the Davies Collison Cave emag for a summary of this judgement).
The essence of this case was the Court’s consideration of what constitutes an innovative step. The Court confirmed that, in accordance with subsections 7(4) and 7(5) of the Patents Act 1990, the following elements should be identified and considered: (a) the invention ”so far as claimed in any claim”; (b) the ”person skilled in the relevant art”; (c) the common general knowledge as it existed in Australia before the priority date; and, (d) whether the invention only varied from the prior art information in ways that make no substantial contribution to the working of the invention. The scope of the appeal in this case considered only elements (a) and (d) as points of contention between the parties¸ although the Court made a number of statements indicating how the common general knowledge should be considered in determining innovative step.
In considering the invention ”so far as claimed in any claim”, Dura-Post contended that a person skilled in the art would understand the invention to include ”the use of spring steel in the manufacture of roadside posts”, where other features of the claims, such as the arcuate cross section, marker hole, the tapered end, barb, and longitudinally extending ribs, were merely ”desiderata features” which formed a part of the common general knowledge. Thus, Dura-Post contended that the claims did not provide a substantial contribution to the working of the invention and therefore none of the claims in the Patents possessed an innovative step.
Dura-Post contended that the use of the word ”invention” in subsection 7(4) in accordance with subsection 18(1A) was intended to mean an ”advance in the art”. The Court rejected this. The Court held that ”the invention…is defined by the claims, and falls to be assessed on a claim by claim basis. If s7(4) is to operate consistently with s18(1A), then the word ‘invention’ in s7(4) must have the same meaning as in s18(1A).” (at 72), and rejected introducing into the statute, the notion of having to prove an ”advancement” in the art.
The Court stated that sections 7(4) and 7(5) require that each claim be compared to prior art information, where section 7(6) requires that each item of prior art information be considered separately. Additionally, the Court stated that the comparison is made from the perspective of a person skilled in the art, having certain background knowledge which is used in identifying and assessing the variations between the claimed invention and the prior art in order to determine whether there has been a substantial contribution to the working of the invention. In doing so, the Court confirmed that the primary judge was correct in considering that the term ”substantial” means ”real” or ”of substance”, in section 7(4).
In considering the application of common general knowledge in determining innovative step, the Court contrasted the approach required relative to the application of common general in an inventive step determination. The Court noted that for inventive step, the statute refers to the body of common general knowledge ”directly”, whereas its ”direct” application is excluded for the purposes of innovative step. Furthermore, the Court stated that for supplementary prior art, with features forming part of the common general knowledge, or disregarding features of the claims on the basis that they form a part of the common general knowledge, would ”greatly diminish the importance of each separate claim and would focus attention instead on the ‘advance in the art’ represented by the alleged invention”. The Court stated such an approach would not conform with the statutory requirement of proceeding on a claim-by-claim basis, and would incorrectly introduce a concept which has no statutory basis.
In applying the test for innovative step, and in particular, in determining what is required in order to provide ”a substantial contribution to the working of the invention”, as required by section 7(4), the Court looked at the purpose of the Innovation Patent system as outlined by the 1995 ACIP report, the Revised Explanatory Memorandum to the Patents Amendment (Innovation Patents) Bill 2000. The Court also looked at the novelty test set out in Griffin v Isaacs (1938) 1B IPR 619, being the case upon which the test for innovative step is based.
In applying these principles, the Court then considered the claims of the Patents in view of the prior art, and determined whether any features in the claims contributed substantially to the way in which the roadside posts functioned, and whether the features necessarily made a substantial contribution to the working of the invention. The court emphasised that ”the presence or absence of a substantial contribution involves a finding of fact” and relied on expert evidence to rule that the primary judge’s conclusions were correct, and that the appeal should be dismissed.
One of the aims of the Innovation Patent system is to provide patent rights for inventions which satisfy a lower threshold of inventiveness, than that required for the granting of standard patents. This is achieved by applying a test which is akin to an expanded novelty assessment. The claims should be considered from the perspective of a person skilled in the art in view of the common general knowledge. In contrast to the approach used to assess inventive step, the common general knowledge cannot be added to the disclosure of a prior art reference.