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5.6.6.5 Indicators of Inventive Step

Date Published

Overview

There are a number of useful tests which indicate the presence of an inventive step. All of these rely upon establishing that there was a prior perceived need for the invention (Elconnex Pty Ltd v Gerard Industries Pty Ltd (1993) AIPC 90-984 at page 39,339).

These tests are relevant to identifying the existence of a prior perceived problem, which would have been previously solved if the solution was truly obvious. However, the tests are not necessarily conclusive proof of a prior perceived problem, especially when taken in isolation. The existence of the problem may not be recognised, or there may be no pressing commercial need for a solution of it, or other solutions may be given preferential consideration (Elconnex Pty Ltd v Gerard Industries Pty Ltd (1992) AIPC 90-848 at page 38,107). 

Indicators of inventive step are 'signposts' or 'secondary indicia' of inventive step. The question whether or not the claimed invention is obvious still needs to be addressed (Elconnex Pty Ltd v Gerard Industries (1993) AIPC 90-984 at page 39,337). The probative weight of secondary indicia of inventive step will vary from case to case, often providing a weak basis to find a conclusion, and may of assistance in a close case where something is required to tip the scales (Conor Medsystems Inc v University of British Columbia and Another (2005) FCA 1661 at page 6).

These tests will likely only arise at further report. Examiners are to consider arguments based on these tests on their merits and should apply balance of probability considerations (see 5.6.1.5 Application of the Balance of Probabilities in Examination).

Various indicators of inventive step

The indicators of inventive step include:​​​​​​​

  • A long-felt need – there is a presumption that it is not obvious, as other inventors must have also tried to solve the need and not succeeded (Lucas and Another v Gaedor Ltd and Others (1978) RPC 297 at page 358);

  • Failure of others – If other inventors have tried to solve a problem and were not successful, a claim will likely involve an inventive step (Howaldt Ld v Condrup Ld (1937) 54 RPC 121 at page 133; Technograph Printed Circuits Limited v Mills and Rockley (Electronics) Limited (1972) RPC 346 at page 353);

  • Complexity of work – If the work undertaken by an inventor in order to produce an invention was particularly complex, and not readily carried out, this is an indication that it was not a matter of routine. In such cases, the invention would not be obvious (Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) HCA 59 at paragraph 58; (2002) 212 CLR 411). This is different to cases of "mere verification", where an inventor merely follows the teaching of the prior art (even if that teaching is complex) to achieve the expected result. In this regard, note Sharp & Dohme Inc v Boots Pure Drug Co Ltd (1928) 45 RPC 153 at page 192;

  • Whether or not a worthwhile line of development – If a line of development has not been favoured by those in the art, the age of the prior art may give a distorted picture of what is obvious. For example, commercial constraints could mean certain lines of development are not seen as part of the answer:

"This may act as commercial constraint which will reduce his willingness to embark on certain lines of development. Indeed the cost of retooling may be such that he will not consider the rewards which would flow from the improved product would justify the change. These purely commercial considerations are likely to affect the direction, if any, in which the established manufacturer may go. However they give a distorted picture of what, from a technical and patent point of view, is obvious. As I have said, a new entrant into the trade may well have different commercial constraints. The court has to be alert to the difference between commercial attractiveness and technical obviousness. They are not always the same."(Brugger & Ors v Medic-Aid Ltd (1996) RPC 635 at pages 653 - 655);​​​​​​​​​​​​​​

  • Copying of the invention – Copying of the invention in preference to the prior art is indicative of an inventive step (Samuel Parkes & Co Ltd v Cocker Brothers Ld (1929) 46 RPC 241 at page 248; Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 239); and

  • Commercial success – Commercial success is indicative, but not conclusive, of an inventive step (Meyers Taylor Pty Ltd v Vicarr Industries Ltd (1977) CLR 228 at page 239; General Tire & Rubber Company v Firestone Tyre and Rubber Company Ltd (1972) RPC 457 at page 503).

 

Amended Reasons

Amended Reason Date Amended

Published for testing
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