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 versa.
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 [2009] 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 patent.
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