Innovation patents were introduced over 10 years ago, and continue to provide a powerful tool for patentees in Australia.

It is the low validity level of innovation  patents which provides benefit to patentees. However, there are additional benefits including the speed of grant and the relatively low cost involved.

What is an innovation patent?

Innovation patents can protect innovations or developments that would not be protectable by standard patents. Innovation patents last for eight years. They were originally set up for the protection of lower level innovations or developments, but it soon became apparent they could also be extremely useful in the protection of inventions that could validly be protected by a standard 20-year patent.

Innovation patents vs standard patents

Standard patents require both novelty (newness) and inventiveness (non- obviousness) for validity. In contrast, while innovation patents also require novelty, they do not have the same requirement in relation to inventiveness. Innovation patents require a much lower step over the prior art, which is an ‘innovative step’. An innovative step requires the invention to have at least one difference from the prior art, and the difference must be one which contributes ‘substantially’ to how the invention works. The innovative step requirement is often satisfied by an invention that simply has a difference from the prior  art. The difference does not need to be great, and can be a difference that would have been obvious to make or adopt based on the prior art or the general knowledge of the inventor.

Despite the low requirement for validity, innovation patents provide a very powerful tool for patent owners. This arises because challenges to the validity of a patent are often made to avoid a finding of patent infringement. That is, if the infringer can successfully show a patent to be invalid, then the patent becomes unenforceable. For standard patents, an infringer will often look for close prior art and then argue that the step from the prior art to the patented invention is obvious, so that the invention lacks an inventive step. However, for innovation patents, this argument is not applicable. In practice, it is generally necessary for the infringer to find prior art that is more than just close, it needs to be a direct knock-out. Prior art of this kind is usually far more difficult to locate.

Innovation patent validity

The major case that relates to innovation patent validity remains Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 (30 June 2009). In this case, Delnorth secured an innovation patent for a roadside post which required, among other things, formation out of sheet spring steel which would allow the post to be elastically bendable through 90 degrees. Spring steel is well known to be elastic, and therefore the requirement to be bendable through 90 degrees seems unremarkable.

Accordingly, had the court been considering  a standard patent, there is a high likelihood that this feature would have been found to be obvious or lack an inventive step. However, in this instance the court was considering an innovation patent, therefore questions of obviousness or inventive step were not relevant.

In applying the ‘innovative step’ test for innovation patents, the court asked:

  1. What are the differences between the claimed invention of the innovation patent and the prior art?, and
  2. Do the identified differences make a “substantial contribution to the working of the invention”?

The court found that spring steel was not used in prior art roadside posts. The use of spring steel was therefore a difference between the invention of the innovation patent and the prior art, which satisfied question 1.

The court then established that the use of spring steel made a substantial contribution to the working of the invention, because without spring steel, the post would not bend as required, which satisfied question 2.

The Delnorth innovation patent was therefore found to be valid, despite the fact that the invention relied on a known characteristic (elasticity) of a common material (spring steel).

Recommendation

It follows that to maximise the strength of patent protection in Australia, clients should consider filing for innovation patent protection either in place of, or in addition to, standard patent protection.