The case involved three innovation patents of Delnorth Pty Ltd (""Delnorth""), 2005100978 (Patent 1), 2006100297 (Patent 2) and 2006100696 (Patent 3). All three patents were related (each was originally filed as a divisional application from the same standard patent application) and concerned a roadside post made of spring steel so as to bend elastically through 90? upon impact by a vehicle. The three patents claim different aspects of the spring steel post. Patent 1 in its broadest claim defined the post as having an arcuate section and a marker hole to provide a depth indication for mounting of the post in the ground; Patent 2 in its broadest claim merely defined the post as being of spring steel and bendable through 90?; and Patent 3 in its broadest claim defined the spring steel post as having a surface coating. Delnorth issued proceedings against Dura-Post (Aust) Pty Ltd (""Dura-Post"") for infringement of its three patents and Dura-Post cross-claimed for revocation of the patent inter alia as lacking novelty and innovative step.



THE DECISION

In giving consideration to the application of the innovative step test Gyles J says [at 52]:

""There is no need to search for some particular advance in the art to be described as an innovative step which governs the consideration of each claim. The first step is to compare the invention as claimed in each claim with the prior art base and determine the difference or differences. The next step is to look at those differences through the eyes of a person skilled in the relevant art in the light of common general knowledge as it existed in Australia before the priority date of the relevant claim and ask whether the invention as claimed only varies from the kinds of information set out in s 7(5) in ways that make no substantial contribution to the working of the invention.""

His Honour notes that the phrase ""no substantial contribution to the working of the invention"" involves quite a different kind of judgement to that involved in determining whether there is an inventive step (the obviousness test which comes into consideration in standard patents). The question of what is meant by ""substantial"" is considered and his Honour notes that in some situations it may mean ""great"" or ""weighty"" and in other situations it may mean ""more than insubstantial"" or ""of substance"". His Honour then goes on to say [at 61]:

""In my view the provenance of the phrase ""make no substantial contribution to the working of the invention"" indicates that ""substantial"" in this context means ""real"" or ""of substance"" as contrasted with distinctions without a real difference.""

In then considering the claims of the patents against the prior art base, which in this case consisted of prior patents and a number of prior uses cited by Dura-Post, his Honour firstly considered the content of the common general knowledge. Although the judgement does not detail what was found to be the common general knowledge it does indicate what was not common general knowledge and he states [at 62]:

""I can find, however, that use of sheet spring steel was not known for use in connection with roadside posts or analogous uses and that none of the cited patents was part of common general knowledge in Australia at the time.""

The analysis of innovative step is then made in relation to a number of different prior art citations and is instructive as it provides a clear indication as to the practical application of the test. In relation to a prior post known as SupaFlex, evidently a flexible roadside post of PVC, his Honour says [at 63]:

""Does the claimed roadside post involve an innovative step over the use (etc) of the SupaFlex plastic guide post? In my opinion, the answer to that question must be ""yes"". Each of the claims involves construction by sheet spring steel. The SupaFlex post is plastic. The materials are quite different, although, no doubt, they each have the same objective. As I have endeavoured to explain, the question is not whether flexible sheet steel is better than flexible PVC ? it is certainly different. It cannot be seriously argued that the material sheet spring steel does not make a substantial contribution to the working of the roadside post claimed in each claim.""

It is to be noted that while his Honour found the broadest claims of the three patents as having innovative step over that particular reference, he found certain of the broader claims of Patents 2 and 3 as lacking innovative step over others of the references. For example in relation to Patent 3 which claimed broadly the spring steel post with a surface coating, his Honour found [at 83] that the surface coating which was the differentiation between claim 1 of that patent and a prior reference did not involve an innovative step, noting that while he did not suggest it had no functional purpose, rather its contribution is not significant enough.

COMMENTARY

What is interesting in this decision, however, is his Honour's approach to the common general knowledge. While as noted above he found that sheet spring steel for use in connection with roadside posts or analogous uses was not in itself part of the common general knowledge, nevertheless his Honour did not comment on the common general knowledge which must surely exist in relation to the general properties of spring steel and which would be well known to engineering designers in all areas of technology. Be that as it may, even if such knowledge had been brought into consideration it likely would not have effected the outcome of this case as claim 1 of Patent 1 which included the features of the arcuate transverse cross-section and marker hole would still have innovative step as both of those features considered independently [at 70] were found to make a substantial contribution.

While this decision does assist in understanding as to how innovative step is to be determined, nevertheless significant issues remain as to the manner in which common general knowledge is to be considered. While the meaning given to ""substantial contribution"" seems entirely appropriate, nevertheless the practical assessment as to substantiality within this context is not always straightforward and may represent a difficult judgement call; for instance, in the writer's view serious doubt arises as to whether the marker hole really does make the required contribution. But in this regard, the difficulty of the assessment particularly in rather borderline cases is really no different to similar determinations which arise, say, when assessing inventive step of a standard patent.