2.5.3.10 Indicators of Inventive Step

There are a number of useful tests which indicate the presence of an inventive step. All of these rely upon establishing that there was a prior perceived need for the invention:

"Unless it is apparent that there was a perceived need for a product, the fact that it was not previously produced does not belie its obviousness. Imitation is not necessarily an indication of perceived need."

Elconnex Pty Ltd v Gerard Industries Pty Ltd (1993) AIPC 90-984 at page 39,339.

These tests are relevant to identifying the existence of a prior perceived problem, which would have been previously solved if the solution was truly obvious. However the tests are not necessarily conclusive proof of a prior perceived problem, especially when taken in isolation. Thus, as was stated in Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) AIPC 90-848 at page 38,107:

"As Buckley L.J. said ... in Tetra Molectric Ltd v Japan Imports Ltd [1976] RPC 541 at 583:

'Failure to recognise an obvious solution to a mechanical or other technical problem may result from a variety of causes. The existence of the problem may not be recognised, or there may be no pressing commercial need for a solution of it, or other solutions may be given preferential consideration. The evidence indicates that for many years flint ignition for smokers' lighters satisfied the commercial need.' [the case involved a patent substituting piezo-electricity]

It was not suggested, in the present case, that the respondent, or anyone else, was in fact researching methods [relating to the invention] at any time prior to its learning of the Elconnex connector."

Finally:

"Although those matters are of importance in the resolution of the problem, they are not conclusive of what the outcome of the case should be. In a case of doubt the existence of a long felt want and immediate imitation might well persuade a court grappling with the problem of whether there was an invention to the inventor's point of view. But in the end one has to come to the question whether or not the claimed invention is obvious."

Full Bench decision in Elconnex Pty Ltd v Gerard Industries (1993) AIPC 90-984 at page 39,337.

These tests will likely only arise at further report.  Examiners are to consider arguments based on these tests on their merits and should apply balance of probability considerations (see 2.13.5.2 Balance of Probabilities).