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Date Published

It may be that in following the one obvious option, a bonus and unforeseen effect is produced. However, the presence of that bonus effect does not in itself give rise to an inventive step, as the person skilled in the art would have inevitably arrived at that solution:

"That which Grace produced might have had some of the desirable qualities of a multi-layer heat shrinkable packaging in a higher degree than might have been expected, or was in fact expected. And it might have demonstrated a better combination of properties, that is to say proving some properties while at least not detracting from others. But at most the end result was a heat shrinkable bag, better not because of any inventive discovery of Grace, but because somebody else's new product, put on the market for uses which included that manufacture, produced better results than expected."

Asahi Kasei Kogyo KK v WR Grace & Co (1992) AIPC 90-847 at page 38,089

This issue will most likely arise at further report stage, where an applicant responds to an inventive step objection on the basis that the invention has a new and surprising effect. However, examiners should be cautious in applying this principle, as the existence of a bonus effect can usually only be established by evidence.

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