Stepping up from innovative to inventive

With the phase out of the innovation patent in Australia, inventors must now rely on a standard patent to protect their inventions.  There are a few differences between a standard patent and an innovation patent.  For example, a standard patent provides a longer term protection than an innovation patent (20 years vs 8 years).  A standard patent must also be examined prior to grant.  And of particular relevance, in addition to being new, the invention claimed in a standard patent must involve an inventive step, as opposed to an innovative step.

Before a standard patent is granted it must be examined to ensure the claimed invention meets the requirements set out in the Australian Patents Act.  Section 7 of the Act requires that the claimed invention must (among other things) be novel and include an inventive step. 

Novelty means that the claimed invention has not been done before anywhere else in the world.  This is a consistent requirement worldwide, and the novelty requirement is the same for both an innovation and a standard patent.  Typically, examiners will rely on prior published patents and applications; however, they are not limited to such documents.

An inventive step means that the invention claimed is not an obvious step from what already exists. An invention may be novel, but if the novelty is merely an obvious step from what already exists it will lack an inventive step.  In contrast, an innovative step only requires that the invention claimed makes a substantial contribution to the working of that invention.  There is no requirement that the invention be non-obvious.

During examination lack of an inventive step will occur if the essential features of a claim have not been previously disclosed, but those features would be obvious to a person skilled in the relevant technical field. 

There are several arguments which may support inventive step, or non-obviousness of an invention.  For example, if the invention solves a long felt need in the field, there is a presumption that the invention is inventive since it may be assumed that others have tried to find a solution and have not succeeded.   

If the work or development to arrive at the invention was particularly complex and not simple routine steps, then this may also be an indication that the invention involves an inventive step.

Others copying the invention, particularly over the known solution, may be indicative of an inventive step, and finally, commercial success of the invention may also be a strong supporting argument that an invention involves an inventive step.

It is important to bear inventive step in mind when considering whether or not to pursue patent protection for an invention.  Whilst the invention may be novel, if it is considered to be an obvious improvement, then it is likely that the invention will lack an inventive step.

Please do not hesitate to contact us if you require any assistance with Australian and New Zealand patent applications.



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