Certain claims considered in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 were found 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 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
	18 Oct 2023