What constitutes an innovative step
FACTS OF THE CASE
The case involved three innovation patents of Delnorth Pty Ltd (""Delnorth""),Tory Burch Flats Leopard 02L, 2005100978 (Patent 1), 2006100297 (Patent 2) and a couple of006100696 (Patent 3). All three patents were related (each was originally filed as a divisional application from the similar popularpatent application) and anxious a roadside post made from spring steel so that you can also bfinishelastically through 90° upon impact by a vehicle. the 3 patents claim diffehireaspects of the spring steel post. Patent 1 in its broadest claim defined the post as having an arcuate segmentand a marker hole to offer a intensityindication for mounting of the post within the ground; Patent 2 in its broadest claim medependdefined the post as being of spring steel and bendable through 90°; and dadtent 3 in its broadest claim defined the spring steel post as having a surface coating. Delnorth issued proceedings against Dura-Post (Aust) Pty Ltd (""Dura-Post"") for infringement of its three patents and Dura-Post cross-claimed for revocation of the patent inter alia as lacking novelty and that innovative step.
the verdict
In giving consideratidirectly to the appliance of the innovative step test Gyles J says [at 52]:
""there is not any want to hunt for thereforeme particular advance within the art to be described as an innovative step which governs the honor of eachclaim. step one is to match the discovery as claimed in each claim with the prior art base and figure outthe adaptation or differences. your next step is to take a look at those differences during the attentions of an personprofessionalwithin the relevant art within the gentleof common general knowledge because it existed in Australia before the feardate of the relevant claim and ask whether the discovery as claimed only varies from the kinds of knowledge set out in s 7(5) in ways in which make no substantial contributidirectly to the working of the discovery.""
His Honour notes thon the phrase ""no substantial contributidirectly to the working of the discovery"" involves quite a special more or less judgement to that duringterested in determining whether there's an artistic step (the most obviousness test that is available into think aboutation in popularpatents). the searchion of what's meant by ""substantial"" is thought of as and his Honour notes that during a fewsituations it's going to intend ""great"" or ""weighty"" and that in other situations it's going to intend ""greater than insubstantial"" or ""of substance"". His Honour then goes directly to mention [at 61]:
""for my part the professionalvenance of the phrase ""make no substantial contributidirectly to the working of the discovery"" indicates that ""substantial"" on this context means ""real"" or ""of substance"" as contrasted with distinctions and not using an actual difference.""
within the n considering the claims of the patents against the prior art base, which on this situation consisted of prior patents and diverseprior uses cited by Dura-Post, his Honour firstly considered the content of the average general knowledge. Alalthoughthe judgement doesn't detail what was found to be the average general knowledge it does indicate what was not common general knowledge and he states [at 62]:
""i will be able to seek out, however, that use of sheet spring steel was not known to be utilized in reference to roadside posts or analogous uses and that none of the maximumcited patents was a part of common general knowledge in Australia on the time.""
The researchof innovative step is then made when it comes to diversediffehireprior art citations and that is instructive because it provides a transpahireindication as to the practicalapplication of the test. when it comes to a previous post referred to as SupaFlex, evidently a versatile roadside post of PVC,Tory Burch Flats Light Purple 01C, his Honour says [at 63]:
""Does the claimed roadside post involve an innovative step over the U.S.e (etc) of the SupaFlex plastic guide post for my part,Tory Burch Flats Brown 50008668 00P, the solutidirectly to that query need to be ""yes"". all the claims involves construction by sheet spring steel. The SupaFlex post is plastic. the fabrics are quite different, although,Tory Burch Flats Rosewood 01H, without a doubt, they each have the similar objective. As i've endeavoured to give an explanation for, the searchion isn't whether flexible sheet steel is best than flexible PVC - it's certainly different. it could't be seriously argued thon the fabric sheet spring steel doesn't make a considerable contributidirectly to the working of the streetside post claimed in each claim.""
it's to be noted t the same time ashis Honour found the broadest claims of the 3 patents as having innovative step over that expressreference, he found sureof the wider claims of Patents 2 and three as lacking innovative step over others of the references. as an example when it comes to Patent 3 which claimed broadly the spring steel post with a surface coating, his Honour found [at 83] thon the outside coating which wbecause the differentiation between claim 1 of that patent and a previous reference didn't involve an innovative step, noting t the same time ashe didn't recommendit had no functional purpose, rather its contribution isn't significant enough.
COMMENTARY
what's interesting on this decision, however, is his Honour's way to the average general knowledge. at the same time asas noted above he found that sheet spring steel to be utilized in reference to roadside posts or analogous uses was not in itself a part of the average general knowledge, nevertheless his Honour didn't comment at the average general knowledge which need tosudependexist when it comes to the overall properties of spring steel and which could be widely recognized to engineering designers in all spacesof technology. Be s it's going to, despite the fact that such knowledge were brought into think aboutation it doubtlessdo not have effected the results of this situation as claim 1 of Patent 1 which come withd the features of the arcuate transverse cross-segmentand marker hole would still have innovative step as either one of these features considered independently [at 70] were found to make a considerable contribution.
at the same time asthis decision does help in understanding as to how innovative step is to be determined, nevertheless serious problems remain as to the way by which common general knowledge is to be considered. at the same time asthe meaning given to ""substantial contribution"" seems entidependappropriate,Tory Burch Flats Black 32118005 003, nevertheless the practicalassessment as to substantiality withon this context isn't straightforward and should constitutea troublea fewjudgement call; as an example, within the writer's view serious doubt arises as as to if the marker hole really does make the specified contribution. But on this regard, the hassleof the assessment particularly in rather borderline cases is truly no diffehireto similar determinations which arise, say, when assessing creativestep of a normal patent.
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