The Bar Has Risen

Following from our previous blog posts on the ‘Raising the Bar’ legislation, you will be aware that the commencement date has passed for the various changes to patentability (and other) requirements in Australia. If you did not request examination before 15 April 2013,  your Australian patent application(s) will now be subject to the new and generally more stringent validity requirements.

IP Australia have received an avalanche of patent applications and examination requests in the weeks leading up to the change; estimated to be a normal year’s worth of requests in the month before the deadline. We suspect that this spike in activity will substantially affect the internal examination queue at IP Australia, resulting in longer delays before examination reports are issued.

Inventive Step Present, but Innovative Step Not?

The innovation patent is typically thought of as necessarily requiring a lower or lesser differentiation from the prior art (innovative step) than that required for the standard patent (inventive step). However, a recent case decided by the Federal Court of Australia shows that it is possible for virtually identical innovation and standard patent applications to be (respectively) rejected for lack of innovative step and found to have an inventive step.

Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165 was an appeal from a decision of IP Australia to revoke a granted standard patent following re-examination based on a number of prior art documents. These documents had not been considered during original examination, but had emerged later. They had also been considered during litigation of a separate Delnorth innovation patent having practically identical claims to the standard patent. Some of the innovation patent claims had been revoked by the Federal Court for lack of innovative step on by comparison with the same prior art.

A key difference between the legislation regarding ‘innovative step’ and ‘inventive step’ was that for any prior art document to be used in an assessment of inventive step, it had to pass three specific hurdles: that it would have been ‘ascertained’, ‘understood’ and ‘regarded as relevant’ by the patent addressee; while no such hurdles were applicable to inventive step.

In this case, some of the key prior art documents that were used to invalidate the innovation patent did not clear those hurdles, and so were excluded from the inventive step assessment. The judge made this decision on the basis that there was not convincing evidence that those documents would definitely have been looked for, nor that they would then have been found, by the patent addressee.

It has not been common for documents to be excluded in this way, as evidence is usually presented that the prior art documents will meet those requirements. However, when the technical field of a patent is fairly ‘low-tech’ (in this case it related to roadside posts) the possibility remains that a general lack of patent searching or patent awareness (or a lack of evidence of this) in an industry could lead to the exclusion of prior art used in assessing novelty from the assessment of inventiveness.

It should be noted that those ‘hurdles’ have now been removed from the Patents Act 1990; all applications coming under the post-‘Raising the Bar’ legislation will face a potentially tougher assessment of inventiveness. However, the old standards will still apply to a vast number of patents and applications existing and sent for examination prior to 15 April 2013.

by Adam Hyland