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If a claim is a mere workshop improvement over the prior art, it will lack an inventive step.

The expression "workshop improvement" refers to an alteration to an existing device which the person skilled in the art would have come to as a matter of routine, "proceeding along previous lines of inquiry and having regard to what was known or used" (Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545).

A workshop improvement can occur:

  • where the prior art fully solves the identified problem - if the person skilled in the art would readily recognise a practical difficulty in that solution, and that practical difficulty would be readily overcome by the person skilled in the art appraised of the common general knowledge (however, see Practical Difficulties Overcome);

  • where the prior art does not provide a solution to the identified problem - if the solution would at once suggest itself to the person skilled in the art (see Fallshaw Holdings Pty Ltd v Flexello Castors and Wheels Plc 26 IPR 565 and Winner v Ammar Holdings Pty Ltd 25 IPR 273); or

  • where the prior art solves an analogous problem in a related area of technology, and the person skilled in the art would recognise the same solution could be applied to the problem with there being no practical difficulty in implementing that solution.

Note: For standard patent applications with an examination request filed before 15 April 2013, the prior art must be information that the person skilled in the art could be reasonably expected to have ascertained, understood, and regarded as relevant.

It may be difficult to determine when a feature is a "mere workshop improvement" and when it involves an inventive step:

"Nobody, however, has told me, and I do not suppose that anybody ever will tell me, what is the precise characteristics or quality the presence of which distinguishes invention from a workshop improvement."

Samuel Parkes & Co Ld v Cocker Brothers Ld (1929) 46 RPC 241 at page 248.

In these cases, balance of probabilities considerations apply (see 2.13.5 Stringency of Tests During Examination).

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