Australia has just had its second Federal Court decision
involving our rather controversial "second tier" patent
system, the innovation patent. In the case, Seafood Innovations
Pty Ltd v Richard Bass Pty Ltd  FCA 723 (12 July 2010),
the plaintiff sued over two innovation patents in the field of fish
processing machinery. It is noteworthy that the second of the
innovation patents was granted after the litigation had commenced
and the plaintiff had seen a detailed response from the defendant
Importantly, the judge confirmed prior authority that, unlike
standard patents, no inventive step/obviousness test applies to an
innovation patent. The peculiar "pseudo novelty"
innovative step test of "Does the refinement make a
substantial contribution to the working of the
invention?" was accepted and adopted by the judge,
effectively meaning that the defendant could not mount any attack
in relation to the obviousness of the innovation patent.
The first innovation patent was found to be not infringed. The
second innovation patent was found to be invalid on the dubious
ground of lack of features in the claims. (The author of this
report queries whether the judge's position would be upheld in
Although the patentee was not successful in this case, it
highlights the fact that innovation patents are recognised in
Australia as important litigation tools. Moreover, there appears to
be no legislative desire to introduce an obviousness test.
Patentees would be well advised, therefore, to consider taking
advantage of the Australian innovation patent system not only to
protect innovations that may not reach the inventive step threshold
but also as an adjunct to standard patents with a view to utilising
the innovation patent during litigation. As with all patents,
however, careful and strategic drafting of the claims by an
experienced attorney is recommended in order to ensure that an
innovation patent will withstand the rigours of litigation.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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