Innovative Step Confirmed

Case - Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC.

Judges: Kenny, Stone & Perram JJ

Handed down on 30 June 2009


This case was an appeal from a single judge (Gyles, J) of the Federal Court who upheld infringement claims made by Delnorth against Dura-post. Dura-post had challenged the validity of the patents on grounds that they lacked inventive step. For some background information on innovation patents, click here. You will find a link to a flowchart for details on the procedure.

The decision of the lower court is available here. A number of issues were raised in that case, but the interpretation of innovative step generated the most excitement, since this was the first case dealing with that characteristic of enforceable innovation patents. To recap, the innovation in question was a flexible support which could be used as a traffic delineator. To that end, it was of a single flexible sheet of spring steel, having a curved face. It could be driven into the ground with a concave side of the sheet facing traffic. Thus, when struck by a vehicle, the support could be bent to accommodate the vehicle and then could spring back into a vertical orientation.

The court emphasised that testing for innovative step is completely different to testing for inventive step, the requirement for a valid standard patent. The exercise requires a determination of the novel features of the invention. Then, if any of the novel features makes a substantial contribution to the working of the invention the innovative step requirement is met.

In this case, the court had a number of prior art documents against which the invention was tested. For example, the court held that the innovative step was met when the prior art considered was a plastic post. The innovation step was met when the prior art considered was a support post of fibre reinforced synthetic material. The same applied for a multi-laminated post.

It should be pointed out that there were a number of other features that the single judge believed made a contribution to the working of the invention. These included a barb, a tapered end and ribs.

The appeal

The critical issue in the appeal was whether or not the single judge erred in interpreting the meaning of "innovative step". It is probably worth repeating the wording of subsection 7(4):

"For the purposes of this Act, an invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would, to a person skilled in the relevant art, in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention."

The kinds of information set out in subsection (5) are information made public in a single document or act and information made public in 2 or more related documents or acts if the relationship between the documents or acts is such that a skilled person would treat them as a single source of that information.

As to be expected from our Patents Act, the need to refer to three different parts of the Act to find out what the various words of section 7(4) mean really complicates issues. Please feel free to drop me an email at for clarification.

Dura-Post submitted that a person skilled in the relevant field and in light of the common general knowledge would have considered the selection of the single sheet of spring steel to be of peripheral value and not contributing to the "working of the invention". As to that phrase, Dura-Post submitted that the single judge had not performed proper evaluation of what it meant.

It appears that Dura-Post made a common error. It based its position on an incorrect interpretation of "invention" in section 7(4) in that it is intended to refer to an "advance in the art" as identified by reference to common general knowledge. Such an interpretation would be at odds with the rest of the Patents Act, in particular, section 18 in which it is clear the invention is that which is defined by the claims. In other words, once you have defined the invention, then you go on to investigate whether or not it complies with the various requirements of the Act.

As set out by Kenny & Stone JJ, section 7(4) requires a comparison to be made between the invention as claimed in each claim with the prescribed information. That comparison is to be made from the perspective of a person skilled in the art.

Kenny & Stone JJ rejected Dura-Post's submission that the phrase "working of the invention" meant, in effect, "the way that the advance in the art is implemented". The Act sets out no such requirement.

The innovative step requirement was woven into our Patents Act against the background of Griffin v Isaacs (1938) 1B IPR 619. In that case, Dixon J. set out that: "Where variations from a device previously published consist in matters which make no substantial contribution to the working of a thing...and the merit if any of the two things, considered as inventions, is the same, it is, I think, impossible to treat the differences as giving novelty."At the time of that case, our novelty requirements were somewhat broader than they are now and the legislature found the manner in which "novelty" was defined in those days useful to apply to innovation patents.

In that case, Dixon J had in mind the waistband on a pair of trousers. Their honours said that the drafter of section 7(4) had simply used Dixon's language and substituted "invention" for "thing".


As someone who has to labour through our Patents Act to earn a living, I acknowledge Peram J.'s comment that section 7(4) is "cumbersome". This case is largely another side effect of our turgid Patents Act.

That aside, I think that this case is a good lesson in interpretation. We need to look to the claims first and foremost to define the invention. Any consideration of prior art before defining the invention can be dangerous.


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