The lack of an obviousness test provides a great opportunity for patentees to take advantage of our innovation patent as a powerful strategic property in its own right and/or to maximise their advantage during litigation. Such was the case in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd  FCAFC 81, where the Full Federal Court recently decided to uphold a trial judge's decision that an innovation patent was not subject to an obviousness test, but rather to the substantially weaker "innovative step" test being something peculiar to Australian jurisprudence.
In the Dura-Post case, relating to the simple subject matter of elastically-deformable road-side posts, the patentee had filed multiple divisional innovation patents from a standard patent and successfully sued on the innovation patents. The successful innovation patent claims each defined a new, but arguably non-inventive, combination of known features. However, the Court concluded, based on evidence, that in each case the claimed difference over the prior art, while small, did provide a substantial or "real" contribution to the working of the invention and as such passed the threshold test.
The implications and recommendations
The absence of an obviousness test allows applicants to potentially obtain protection for more marginal developments and/or obtain broader rights for an invention in Australia than would be possible in nearly all other jurisdictions. As such, we would encourage potential applicants to consider innovation patents as an adjunct to a standard patent application in order to obtain a fast-to-grant right with potentially broader claims.
They should also be considered as an adjunct or alternative for developments that would normally at best be protected via the useful, but limited, registered designs regime. Importantly, many applicants are already doing this. It is undoubtedly preferable to be the holder of innovation patents in your particular IP space, than trying to operate around competitors' rights which may prove to be unexpectedly broad and difficult to successfully challenge.
Innovation patents proceed to "grant" with only basic formalities review. They need not be examined substantively unless and until the patentee wishes to establish enforceable rights. In this way, they can be both powerful and flexible, as it is clear from this latest case that minor points of distinction disclosed within the specification may be sufficient to establish patentable rights.
For the same reasons, it is difficult to accurately predict the potential scope of granted but unexamined innovation patents of third parties. This arguably provides an added incentive for applicants to attempt to dominate particular market sectors through innovation patents.
However, it is worth noting that the innovation patent regime appears to be at odds with one of IP Australia's stated goals, of aligning Australian patentability standards with those of other major jurisdictions such as Europe and the US. Such policy considerations may give rise to a substantive review or revision of the regime in due course, although any resultant changes would almost certainly not have retrospective effect.
Meanwhile, based on the law as it presently stands, a good option is to take full advantage of the significant strategic and commercial benefits that innovation patents currently provide. Your competitors may already be doing just that!
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