Theoretically, innovation patents have a much lower threshold of patentability than standard patents – if an innovation patent describes an invention which differs from the prior art in a way which makes a substantial contribution to the working of the invention, it will incorporate an innovative step. For standard patents, however, it is necessary to demonstrate that the claimed invention incorporates an inventive step, which requires not only that the invention differs from the prior art, but also that the differences between the invention and the prior art would not have been obvious to a person working in the relevant field at the time the invention was made (the skilled addressee). The low threshold of patentability in relation to innovation patents has been the subject of much commentary, and strategic use of innovation patents by patentees to protect inventions which only differ marginally from the prior art has increased dramatically.
In Delnorth Pty Ltd v Commissioner of Patents  FCA 165, Justice Nicholas found that the invention claimed in Delnorth’s standard patent for a roadside post was not obvious, because of the definition of the prior art base in the Patents Act 1990 (Cth) (which requires that the skilled addressee would ascertain, understood and regard the prior art in question before that art can be taken into account in assessing inventive step). He found that the relevant skilled addressee would not have ascertained, understood and regarded the relevant prior art (some US patents) as relevant, because they would not have routinely undertaken patent searches. On that basis, Justice Nicholas found that the evidence did not prove that the patent was not inventive.
This outcome was peculiar because Delnorth had been engaged in some earlier litigation in relation to an innovation patent for the same invention (Justice Nicholas found that the claims of the standard patent and the innovation patent were, in substance the same). In that earlier litigation, Justice Gyles found that two of the claims of Delnorth’s innovation patents lacked an innovative step over the same prior art that Justice Nicholas considered in the later proceeding. This finding was open to Justice Gyles because the definition of prior art base in relation to innovative step does not impose the same requirement that the skilled addressee would need to ascertain, understand and regard the prior art in question as relevant before it can be taken into account.
Justice Nicholas set out the relevant statutory provisions in some detail “to assist in explaining how a claim of an innovation patent might be invalid on the ground that the claimed invention lacked any innovative step even though an identical claim appearing in a standard patent, which takes its priority from the same priority document, might not be invalid on the basis that it lacked any inventive step.”
This discrepancy in the standard for determining innovative step and inventive step is a transitory one. The definition of the prior art base for assessing inventive step had already been the subject of considerable criticism before this decision, and the Raising the Bar Act, which will come into effect in April 2013, removes the requirement for the skilled addressee to have ascertained, understood and regarded prior art as relevant before it can be taken into account in assessing inventive step. The Raising the Bar Act will affect all patent applications filed from 15 April 2013, and patent applications filed prior to that date for which an examination request has not been filed prior to 15 April 2013. For more information on Raising the Bar, see our earlier updates here and here.
In the meantime, though, patentees should be aware that in some cases (particularly in very practical fields, where the invention will be used by people who are not likely to conduct thorough literature or patent searches), innovation may actually be a higher threshold than invention.