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If a claim is a mere technical equivalent of the prior art, it will not be inventive.

A technical equivalent occurs when integers of a claim replace one or more features of the prior art, and:

  • the characteristics of the replacement are part of the common general knowledge of the person skilled in the art and provide the same functionality in the context of the problem;

  • the replacement of the prior art feature would occur at once to the person skilled in the art (Allsop v Bintang 15 IPR 686, (1989) AIPC 90-615; Elconnex Pty Ltd v Gerard Industries Pty Ltd (1993) AIPC 90-984)

  • the combination as a whole retains the same functionality in the context of the problem; and

  • there are no problems or difficulties to be overcome in making the replacement.

Where there is a choice of technical equivalents, the choice of one over the others is irrelevant - except where there was no special inducement to choose that one and it has a surprising advantage (see Selections and Special Inducements; Obvious Selections).

The substitution of an integer in a combination with a technical equivalent will not give rise to an inventive step unless a new combination results.  In Winner & Anor v Ammar Holdings Pty Ltd 25 IPR 273 at page 294, (1993) AIPC 90-971 at page 248 it was stated:

"Notwithstanding that the inventive step may lie in the choice and management of integers in a combination patent (Wellcome Foundation at 281) [Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262], where one starts with a known article or thing and merely substitutes or adds a known device or means to facilitate the better use of the thing, there is a risk of want of inventive step "unless the combination is substantially a new thing" (May v Higgins (1916) 21 CLR 119 at 121; see also Sami S. Svendsen v Independent Products Canada Ltd (1968) 119 CLR 156 at 164-165)."

This was reinforced in Elconnex Pty Ltd v Gerard Industries (1993) AIPC 90-984, at page 39,326 where it was stated:

"this is not a case of a new combination, although of old integers, but of an old combination which has been, at most, subjected to slight variations. The question must be whether those variations are other than obvious."

The test for determining whether a new combination has been made, and hence whether an inventive step exists, is whether the essential character of the device has been changed. Thus in May v Higgins (1916) 21 CLR 119 at page 123.

"It appears to me that it is a mere improvement of one previously existing integer. It is not a new integer giving a better result, nor the substitution of a totally different integer, the presence of which is such as to make the whole machine an essentially different machine, a new unit. It is, I think, at best an improvement upon a prior integer not altering the essential character of the machine."

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