The Australian patent system has a troublesome beast called the
innovation patent. It is possible to obtain both standard patents
and innovation patents. Under the innovation patent system there is
no test for obviousness, but rather a test for an innovative step.
Further, in certain circumstances, it is possible to file
innovation patents based on standard patents and vice
The lack of an obviousness test means that the innovation patent
system is arguably a system under which it is easier to obtain a
patent and to launch successful infringement proceedings. Such was
the case in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd
 FCAFC 81, where the Full Federal Court decided this month 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. The innovative step test is something
peculiar to Australian jurisprudence. In the Dura-Post
appeal, relating to the simple subject matter of roadside posts,
the patentee had filed a divisional innovation patent from a
standard patent and successfully sued on the innovation patent.
The Patent Office needs to consider doing away with the
innovation patent. Failure to address the dismantling of the
innovation patent will lead to litigants legitimately taking
advantage of the weaker tests. The blindness to the faults of the
ill-thought-out innovation patent system is going to significantly
assist the enforcement of weak patents in Australia, bringing our
system into potential future disrepute.
The Patent Office recently released a series of working papers
directed to amending our patent legislation to toughen up our
standard patent obviousness position and bring it into line with
Europe and the United States. Arguments put forward for a change in
our standard include the need to adopt a global jurisprudential
perspective. The Patent Office has perhaps turned a blind eye to
the total lack of global precedent for the innovation patent.
Further, as other major jurisdictions, such as the US in KSR
International Co v Teleflex Inc, toughen up their obviousness
laws, we appear to be going the wrong way with our weak innovation
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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