8.6.2 Innovative Step

Date Published

Also in this Chapter:

Key Legislation:

Patents Act:

  • s7 Novelty, inventive step and innovative step  
  • s18 Patentable inventions  

Related Chapters:

  • 2.31.4.5.4.2 Examples

Overview

The claims of an innovation patent must involve an innovative step. As to what constitutes an innovative step, sec 7(4) provides that:

"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." (emphasis added)

Subsection 7(5) identifies the information to be of the following kinds:

"(a) prior art information made publicly available in a single document or through doing a single act;

(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information."

Examination Practice

Examiners should note that the prior art base against which an assessment is made of whether an invention involves an innovative step is the same as that used in relation to standard patent applications when assessing whether an invention involves an inventive step. However, for inventive step considerations, the prior art information is limited to information that the skilled person could be reasonably expected to have "ascertained, understood and regarded as relevant". There is no such limitation for innovative step considerations.  Thus, although the prior art base for inventive step and innovative step is the same, the prior art information that can be considered for each is different.

An adverse innovative step finding must rely on a published document. Information available only through the doing of an act is not to be considered during examination.

Unlike an adverse inventive step finding, an adverse innovative step finding cannot rely on common general knowledge per se, whether considered separately or together with the disclosure of a document. The reference to common general knowledge in s7(4) relates to the assessment of the contribution a feature makes to the working of the invention, and not to whether that feature is itself common general knowledge.


Note: When categorising citations relevant to an innovation patent, the ‘X’ category should be used for those documents where the claimed invention cannot be considered novel, or cannot be considered to involve an innovative step, when the document is taken alone. Where two or more related documents are considered as a single source of information (s7(5)), the primary document should be categorised as an ‘X’ and the secondary document (referred to explicitly in the primary document) should be categorised as an ‘L’. The ‘Y’ category does not apply to innovation patents, as an innovative step objection cannot be based on a combination of (unrelated) documents, or the combination of a document and common general knowledge.

Determination of Innovative Step

An innovative step requires that the invention is not only novel, but that it also differs from what was already known in a way that is not merely superficial (or trivial) or peripheral to the invention. The variation must be of practical significance to the way the invention works, so as to make a "substantial contribution" to the working. However, in contrast to a standard patent application, there is no requirement that an invention claimed in an innovative patent must be non-obvious. Therefore, the inventive threshold for innovation patents is lower than that for standard patent applications.

The concept of innovative step was considered in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81.  As set out by the Court at paragraph 54, the test for an innovative step requires the consideration and, where necessary, the identification of:

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​​​​​​​

then to ask, in accordance with s7(4), whether the invention only varies from the kinds of information in s7(5) in ways that make no substantial contribution to the working of the invention.  This approach has been followed in subsequent decisions on innovation patents (see, for example, Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2010] FCA 723 and SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited [2012] FCAFC 95).

Substantial Contribution

The nature of the "substantial contribution" was considered in the Dura-Post decision and the following points can be made:

  • The assessment of innovative step is a matter of fact.  Examiners will not normally have available to them direct evidence that could assist in this regard and will need to make an assessment of whether an innovative step exists based on their own knowledge.  However, the balance of probabilities applies.
  • "Substantial" in the context of substantial contribution means “real” or “of substance” rather than “more than insubstantial” or “distinctions without a real difference”.
  • The substantial contribution is in relation to the working of the invention itself and not the contribution that is made to the art.
  • There is no provision in s7(4) or s18(1A) which provides means for distinguishing the essential features of the invention (as defined in the claims) from its non-essential features. The concept of essential features/non-essential features is not part of the consideration for innovative step.

2.31.4.5.4.2 Examples discusses the features that were found in the Dura-Post decision to provide a “substantial contribution” to the working of the invention despite being known in the art.