Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure. Overview of the inventive step requirement

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Considerations for inventive step

During examination of an application for a standard patent, examiners must consider whether a claim contains an "inventive step" in relation to the prior art base.

​​​​​​​The requirement of inventive step is determined by the combined operation of subsections 7(2), 7(3), 18(1)(b)(ii) and Schedule 1 of the Patents Act 1990. Examining for the inventive step requirement requires a consideration of:

  • the information against which the question of obviousness is tested;

  • who the person skilled in the relevant art is;

  • the common general knowledge at the priority date; and

  • whether or not the claimed invention is obvious.

​​​​​​​The purpose of the assessment is to determine that when “looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done faced with a similar problem which the patentee claims to have solved with the invention” at the priority date (Lockwood v Doric (2007) HCA 21 at paragraph 127).

The concept of “obviousness”

The concept of "obviousness" was introduced by the 1952 Act but is no longer referred to as a ground of objection. However, court decisions have drawn no distinction between the concepts of lack of inventive step under the 1990 Act and obviousness under the 1952 Act (see Winner & Anor v Ammar Holdings Pty Ltd 24 IPR 137 at page 140; Firebelt Pty Ltd v Brambles Ltd (2002) HCA 21; 54 IPR 449). Therefore, examiners can for practical purposes equate obviousness with lack of inventive step and precedent for inventive step under the 1990 Act is provided by relevant case law in respect to obviousness.

However, the prior art base for inventive step was expanded in the 1990 Act. Therefore, the types of information which form part of the prior art for the assessment of obviousness depends on whether the applicable provision is that as originally enacted, or as amended by the Patents Amendment Act 2001, or as further amended by the Raising the Bar Act 2012.

The term "obvious" means:

  • “something which lies in the way, and in the context of the Act is used in its normal sense of something which is plain or open to the eye or mind, something which is perfectly evident to the person thinking on the subject" – Olin Mathieson v Biorex (1970) RPC 157 at page 188; and/or

  • “… a much-used word and it does not seem to us that there is any need to go beyond the primary dictionary meaning of 'very plain'” – General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 497.

The question of whether an invention is obvious is a question of fact and the answer to be resolved on the facts of the case (Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) HCA 59).

​​​​​​​Unlike courts, examiners do not have access to evidence from the person skilled in the art.  Instead, they are to put themselves 'in the shoes of the skilled worker' and make their own assessment of what the notional skilled worker was likely to have done at the priority date.  In doing so, they assess "obviousness" based on their own knowledge and balance of probability considerations (see Balance of Probabilities Standard; and Application of the Balance of Probabilities in Examination).

Legislative framework for assessing inventive step

The relevant provisions for an assessment of inventive step under the 1990 Act, including amendments brought about by the Raising the Bar Act 2012, are outlined below.  This information applies to patent applications with an examination request on or after 15 April 2013.

Section 18(1)(b)(ii) of the Patents Act (1990) requires that “an invention… of a standard patent… so far as claimed in any claim…when compared to the prior art base as it existed before the priority date of that claim… involves an inventive step”.

Schedule 1 defines the meaning of the prior art base.  Relevant for assessing inventive step are:

  • Information in a document that is publicly available before the priority date, whether in or out of the “patent area” (that is, Australia, Australian continental shelf, etc); and

  • Information made publicly available before the priority date through doing an act, whether in or out of the patent area.

​​​​​​​​​​​​​​Subsections 7(2) and 7(3) set out the condition upon which an invention would not be taken to involve an inventive step when compared with the prior art base:

"(2) For the purposes of this Act, an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious 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, whether that knowledge is considered separately or together with the information mentioned in subsection(3).

(3) The information for the purposes of subsection (2) is:

(a) any single piece of prior art information; or

(b) a combination of any 2 or more pieces of prior art information that the skilled person mentioned in subsection (2) could, before the priority date of the relevant claim, be reasonably expected to have combined."

Amended Reasons

Amended Reason Date Amended
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