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5.6.15.5 Determining Innovative step

Date Published

Note: The innovation patent system has been phased out.

Innovation applications must have a date of patent before 26 August 2021. This can be achieved by:

  • the innovation patent application being a divisional application where the parent application has a date of patent before 26 August 2021;
  • the innovation patent application being a divisional application where the parent application is a granted innovation patent; or
  • converting any standard application that has a date of patent before 26 August 2021 to an innovation application before acceptance.

In addition, every claim in an innovation patent must have a priority date that is before 26 August 2021.

Overview

The relevant legislation and examination practice regarding innovation patents depend on the date of examination request or the time in which the Commissioner makes a decision to examine the patent.

Examination requests filed on or after 15 April 2013 or where the Commissioner had not decided before 15 April 2013 to examine the patent

The claims of an innovation patent must involve an innovative step. As to what constitutes an innovative step, s7(4) provides that:

"an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed (whether in or out of the patent area) before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention."

Subsection 7(5) identifies the information to be of the following kinds:

"(a) prior art information made publicly available in a single document or through doing a single act;

(b) prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information."

Note that the prior art base for an innovative step is similar to that for inventive step used in relation to standard patent applications. However, unlike an adverse inventive step finding, an adverse innovative step finding cannot rely on common general knowledge per se, whether considered separately or together with the disclosure of a document. The reference to common general knowledge in s7(4) relates to the assessment of the contribution a feature makes to the working of the invention, and not to whether that feature is itself common general knowledge.

Examiners should also note that an adverse innovative step finding can rely on information made publicly available through doing an act, including a prior use.

Examination requests filed before 15 April 2013 or where the Commissioner had decided before 15 April 2013 to examine the patent 

What constitutes an innovative step is similar to above, except for the following differences

  • limited to common general knowledge only within the Patent Area;
  • information available only through the doing of an act is not to be considered during examination; and
  • Unlike inventive step, innovative step is not limited to information that the skilled person could be reasonably expected to have "ascertained, understood and regarded as relevant". ​​​​​​​

Citation categories and combining documents for Innovative step

When categorising citations relevant to an innovation patent, the ‘X’ category should be used for those documents where the claimed invention cannot be considered novel, or cannot be considered to involve an innovative step, when the document is taken alone.

Where two or more related documents are considered as a single source of information (s7(5)), the primary document should be categorised as an ‘X’ and the secondary document (referred to explicitly in the primary document) should be categorised as an ‘L’. The ‘Y’ category does not apply to innovation patents, as an innovative step objection cannot be based on a combination of (unrelated) documents, or the combination of a document and common general knowledge.

Test for an Innovative step 

An innovative step requires that the invention is not only novel, but that it also differs from what was already known in a way that is not merely superficial (or trivial) or peripheral to the invention. The variation must be of practical significance to the way the invention works, so as to make a "substantial contribution" to the working. However, in contrast to a standard patent application, there is no requirement that an invention claimed in an innovative patent must be non-obvious. Therefore, the inventive threshold for innovation patents is lower than that for standard patent applications.

The concept of innovative step was considered in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) FCAFC 81. As set out by the Court at paragraph 54, the test for an innovative step requires the consideration and, where necessary, the identification of:

  • the invention “so far as claimed in any claim”;
  • the “person skilled in the relevant art”;
  • the common general knowledge as it existed before the priority date; and
  • ask in accordance with s7(4), whether the invention only varies from the kinds of information in s7(5) in ways that make no "substantial contribution" to the working of the invention.  

This approach has been followed in subsequent decisions on innovation patents (see, for example, Seafood Innovations Pty Ltd v Richard Bass Pty Ltd (2010) FCA 723 and SNF (Australia) Pty Ltd v Ciba Speciality Chemicals Water Treatments Limited (2012) FCAFC 95).

"Substantial contribution"

The nature of the "substantial contribution" was considered in the Dura-Post decision and the following points can be made:

  • the assessment of innovative step is a matter of fact. Examiners will not normally have available to them direct evidence that could assist in this regard and will need to make an assessment of whether an innovative step exists based on their own knowledge. However, the balance of probabilities applies.
  • "Substantial" in the context of substantial contribution means “real” or “of substance” rather than “more than insubstantial” or “distinctions without a real difference”.
  • The substantial contribution is in relation to the working of the invention itself and not the contribution that is made to the art.
  • The concept of essential features/non-essential features is not part of the consideration for innovative step. There is no provision in s7(4) or s18(1A) which provides means for distinguishing the essential features of the invention (as defined in the claims) from its non-essential features.

Indicators of potential Innovative step

Note that the information in this part applies to all innovation patents.

As to the level of contribution necessary to be ‘substantial’ and thus meet the innovative step test, no definitive measure applies and examiners need to assess each case on its own merits given the nature of the invention.

Questions which may assist in considering the requirement for a ‘substantial’ contribution include:

  • does the difference identified between the invention and the prior art convey an advantage to the invention;
  • does the difference provide a technical or functional contribution to the invention*; and 
  • is the difference a significant aspect of the operation of the invention?

*In assessing this indicator, the concept of 'technical nature or feature' in terms of that used in relation to manner of manufacture may be helpful (see 5.6.8 Patent eligible subject matter (Manner of Manufacture). Technical in this sense is in relation to vendible or economic value having a practical application, that is, there is some usefulness or physical effect resulting from the working of the invention. Mere aesthetic effects are not considered to fall within the realms of technical.

Answering ‘yes’ to these questions suggests that the invention is likely to be innovative, while answering ‘no’ suggests that the invention may lack an innovative step.  However, it must be borne in mind that these questions are merely indicators and each case needs to be considered on its own merits. Product Management Group Pty Ltd v Blue Gentian LLC (2015) FCAFC 179 makes it clear that the appropriate test to apply remains whether there is a substantial contribution to the working of the invention. In this regard, examiners should reflect the appropriate test in their objections.

Examples below discuss the features in the Dura-Post decision that were found to confer an innovative step and the advantages or contributions that they made to the invention.

Examples of Innovative step

Note that the information in this part applies to all innovation patents.

Certain claims considered in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd (2009) FCAFC 81 were found to be innovative, while others lacked an innovative step. These examples may assist in applying the "substantial contribution" aspect of the innovative step test.

The roadside post of sheet spring steel was found to be innovative over prior disclosures of posts made of plastic or fibre reinforced synthetic material. While the various materials have the same objective (flexibility), the materials themselves are different and the use of sheet spring steel was a significant aspect in the operation of the roadside post and was found to make a substantial contribution.

Additional features of the roadside post, all of which were known individually in the art, were found to contribute to the working of the invention. These features were a marker hole (which ensured installation of the post to the correct depth and aided in extraction), a barb (which served to anchor the post in the ground), a tapered end (which facilitated installation), longitudinally extending ribs (which improved resistance to buckling and reduce wind shimmying) and the particular dimensions as defined in the claim. Each of these features was found to make a substantial contribution to the working of the roadside post.

However, the roadside post was found not innovative in light of a "highway marking device" which differed only in the placement of the post in relation to the road. The placement was found not to make a substantial contribution to the working of the post.

The surface coating on the roadside post was also found not innovative. The judge in Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd (2008) FCA 1225 stated at paragraph 83 that:

“I do not suggest that it has no functional purpose, rather that the contribution is not significant enough”.

More guidance in applying the "substantial contribution" aspect of the innovative step test can be gained from the following reported cases which applied the test for novelty as stated in Griffin v Issacs (1942) AOJP 739 at page 740; 1B IPR 619 and which preceded the reverse infringement test. The test for innovative step is a modified form of this previous novelty test.

Washex Machinery Corporation v Roy Burton & Co (1975) 49 ALJR 12

The invention concerned an industrial dry cleaning or washing machine.  The High Court noted a "significant difference" between the prior art machine which had a drum mounted on an inclined axis, whereas the patent in suit had an axis which was substantially horizontal. The Court regarded this "as a very marked distinction affecting the entire design criteria and in that respect distinguishable from the case of Griffin v Issacs".

Thetford Corporation v Sanitation Equipment 7 IPR 77

The portable toilet of the invention differed from a prior art device in that a component which was provided as a separate part in the prior art was defined as an integral part of the portable toilet in the claim. This difference was considered to contribute to the working of the invention as it was stated “It may well be that the provision of an interlocking part simplifies construction or lowers the cost of construction, and as no evidence to the contrary has been produced the doubt on this point must be resolved in favour of the applicant.”

Whitco v Austral Lock 13 IPR 115

A claim to a cylinder lock differed from a prior device with a cover member, in that the cover member included projections which extended at least partially into the tumbler pin passages. This difference was found to make no substantial contribution to the working of the invention, since the projections contributed no more to closing the passages, or to retaining any springs and tumbler pins therein, than a cover without such projections.

Carpenter v Sue 23 IPR 63

The tool of the invention differed from a prior device by the addition of a barb feature. The barb feature enabled the tool to be used in a way enhancing its operation. This difference was found to clearly contribute to the working of the invention.

Re Application of Bruce Lake 24 IPR 281

The invention related to a cleaning process for ducting and differed from the prior art by way of a self-propelling feature of the cleaning nozzle when supplied with pressurised air. The self-propelling feature was found to make a substantial contribution to the working of the invention.

​​​​​​​Bausch & Lomb Inc v Allergan Inc (1992) AIPC 90-913

The invention was a method of cleaning and disinfecting contact lenses, which significantly reduced the time needed to complete the process. It was found that the prior art method, which consisted of two steps, was not an equivalent of the method according to the invention which combined these two steps into one.

Amended Reasons

Amended Reason Date Amended

Published for testing
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