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An inventive step can arise where:

  • a problem was known

  • the cause of that problem was unknown at the priority date; and

  • the inventor has identified the cause of the problem - the "real nature" of the problem.

In this situation:

"the perception of the true nature of the problem was the inventive step which, once taken, revealed that straightforward experiments will provide the solution."

Wellcome Foundation Pty Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 281.

Thus, if an inventive step lies in the identification of the true nature of the problem, it is irrelevant whether there is any subsequent inventive step in providing a solution to the problem.

Where the invention lies in identifying the true nature of the problem, this must be clear from the specification, either by assertion or by clear inference:

"However, in the present case there is no suggestion in the specification itself that discovery of the problem involved an inventive step."

Winner & Anor v Ammar Holdings Pty Ltd 24 IPR 137 at page 141.

In response to an objection of lack of inventive step, an applicant may amend the specification to assert that the invention resides in identifying the true nature of the problem. Such amendments must meet the normal allowability requirements.

However, it cannot be said that the invention lies in identifying the real nature of the problem if the nature of the problem is obvious:

"In my view it is sufficient if the workman or user of the article would as a matter of observation and use himself or herself recognise the defect which it is alleged the invention overcomes to call in question the issue of obviousness."

Winner & Anor v Ammar Holdings Pty Ltd 25 IPR 273 at page 295.

Note: This will usually require evidence that the prior art was "used"; it cannot arise if the prior art is a mere paper anticipation.

If the prior art addresses or discusses the same problem, and identifies its true nature, any argument that an inventive step resides in identifying the true nature of the problem must fail.

If the prior art solves the problem, but has not recognised its true nature:

  • the same solution will result in a novelty objection; otherwise

  • a different solution will involve an inventive step.

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