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 ISSUE_10 April 2006 An Innovative Step for IP Australia | |
The Australian Patent Office has issued its first decision dealing with the question of what constitutes an innovative step and the result is positive for innovation patentees. This is a significant step in terms of Australian patent law because, until now, the Patent Office and the Federal Court have not been asked to consider the question since innovation patents were introduced in May 2001. The decision arises from an opposition to certified Australian innovation patent no 2003100331 for "A thermoformable acoustic sheet" in the name of I.N.C. Corporation Pty Ltd. The Smith Family, MCK Pacific Pty Ltd and Foss Manufacturing Company ("the opponents") opposed the innovation patent on the grounds that the claimed invention was not novel and lacked an innovative step in view of the opponent's manufacture and sale of thermoformed sheets before the priority date of the innovation patent. The opponent relied on test results of the properties of their own thermoformed sheets to establish that the properties of the claimed acoustic sheets were anticipated by or did not involve an innovative difference in view of the thermoformed sheets. The Delegate rejected the test results because the testing was not performed in accordance with an Australian standard specified for testing the claimed properties. This allowed the Delegate to conclude that the claimed invention is novel. Rejection of the test results also allowed the Delegate to conclude that the claimed invention includes an innovative step without considering the issue in detail. Nevertheless, the Delegate made some important comments on the question of what constitutes an innovative step. Most importantly, the Delegate indicated that the claimed invention includes an innovative step because the differences between the claimed invention and the prior art are (a) essential features (i.e. "not merely superficial or peripheral to the invention") that (b) have a practical impact on the functionality of the invention. Requirement (b) appears to be an attempt at rewording the innovative step test in the legislation which states that the difference between the claimed invention and the prior art must make a substantial contribution to the working of the invention. The words "practical impact on the functionality of the invention" appear to have a similar broad conceptual connotation to the term "substantial contribution to the working of the invention". However, "practical impact" sits more comfortably with an allegation that an innovative difference improves the performance qualities of an invention without making a difference in the way the invention works. It seems to follow that any difference between the claimed invention and the prior art that is found to be essential will arguably be innovative on the basis of improved performance. Hence, the quantum of difference between the claimed invention and the prior art becomes less important and the question of whether the claimed invention achieves its object becomes more important. In view of the above, it is difficult to see an innovation patent being held to be novel but lacking an innovative step because the words "practical impact" account for the performance qualities, for example efficiency, speed and accuracy, of the invention in addition to the actual way in which the invention works. The words imported by the Delegate from the Patent Office Manual expand the scope of the legislation by making it easier for innovation patentees to rely on performance qualities as a basis for demonstrating that an invention has an innovative step, once the invention is shown to differ from prior art by a feature that is essential. Such performance qualities may be demonstrated by test results extrinsic to the patent specification. One practical ramification of this decision is it establishes a precedent for Patent Office practice in examining applications for innovation patents and in oppositions. No doubt the scope of the terms "substantial contribution" and "practical impact" will be explored in more detail in following decisions. In the meantime, it seems that patentees can rest more easily knowing that opponents to innovation patents will have considerable difficulty invalidating a patent for want of an innovative step. | |
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