Australia introduced the innovation patent protection system in 2001 to provide applicants with fast and relatively simple intellectual property protection, suitable for products with short market life cycles. Like standard patents, innovation patents require novelty and creativity in the invention technology, but the standard of creativity is lower than the former. In a recent patent invalidation case, the Australian Federal Court clarified for the first time the criteria for judging the “imovative step” of an innovative patent.
De North filed a lawsuit against DuraPost for infringement of three of its Ezy-driven innovation patents. The latter then countersued that the former's innovation patents were invalid. DuraPost claimed in the complaint that several of DelNorth's innovation patents lacked inventive step as stipulated in Section 7(4) of Australia's Patents Act 1990. The criteria for judging the inventive step of innovation patents became the focus of the trial.
The Australian Federal Court took the following two steps when determining whether the Ezy driver patent possesses inventiveness: ① Compare the inventive technology in each claim with the prior art to determine the difference between the two ; ② A person skilled in the field will examine the differences determined in step 1 based on the common knowledge in Australia before the relevant priority date to determine whether the inventive technology is only different from the prior art and does not make a substantial contribution to the invention.
Regarding "substantial contribution", the Federal Court of Australia made the following two points:
1. "Failure to make a substantial contribution to the invention" involved in the review of innovation patent creativity is different from standard patents The criteria for judging in the inventive step review are completely different.
2. Relative to the difference between inventive technology and existing technology that has no actual or essential significance, "substantial" refers to "actual" or "essential".
The Federal Court of Australia pointed out that the following factors do not need to be considered when judging whether the invented technology is creative compared with the existing technology: whether the invented technology is better than the existing technology: the degree to which the invented technology is different from the existing technology; Whether the inventive technology can be obviously deduced from the existing technology.
In the end, the Australian Federal Court held that some of the claims in the Ezy drive innovation patent in this case were inventive.
This case once again clarified that the "creativity" standard of innovation patents is lower than that of standard patents, and innovation patents can be used to protect inventions that are only slightly different from existing technologies. In the future, it will be more difficult for innovation patents to be declared invalid due to lack of "inventive step", which will be beneficial to the protection of the patentee's rights. In addition, the judgment in this case also means that products or methods with innovative patents are more likely to lose their competitive advantages.