by clicking the arrows at the side of the page, or by using the toolbar.
by clicking anywhere on the page.
by dragging the page around when zoomed in.
by clicking anywhere on the page when zoomed in.
web sites or send emails by clicking on hyperlinks.
Bio Technology : October 2009
Volume 19 • Number 3 • October 2009 Australasian BioTechnology 39 AusBioFEATURE The Australian Patents Act 1990 (Cth) provides that an invention is taken to have an innovative step if it has a point of difference over the prior art that makes a 'substantial contribution to the working of the invention'. Their Honours rejected the contention by Dura-Post that this enquiry involved first identifying the purported advance in the field of the invention and then asking whether the differences between the claims and the prior art make a substantial contribution to that advance. Instead, the Court said that the invention is defined by the claims alone and falls to be determined on a claim-by-claim basis. In the context of the claimed roadside post, this meant the question was whether the claimed features (1 to 5 above) made a substantial contribution to the way the roadside post functions. The question was not whether the claimed features contributed to the claimed function of the road- side post of being elastically bendable. Their Honours therefore affirmed the first instance decision that each of features made a substantial contribution to the working of the post and therefore were each sufficiently innovative to sustain valid patent protection. What does this mean? This decision has relevance to all biotech products and services (except for plants and animals and biological processes for their generation, which are outside the scope of the innovation patent regime) so that it will now be easier to obtain a broad patent claim to a class of molecules and much harder to stop someone else from doing so. The Dura-Post v Delnorth decision will make it more difficult to predict the scope of protection that might arise from a pending patent application because various minor points of distinction disclosed in the application may well qualify for innovation patent protection. Therefore there is now greater uncertainty as to whether a new product or method will infringe on competitors' patent rights. It will now be difficult to successfully challenge the validity of an innovation patent on the basis of a lack of innovative step. Even though all of the features of a claim may be known and obvious to combine together, this alone will not invalidate a claim for lack of innovative step. This plac- es the owner of an innovation patent in a powerful position when seeking to assert its patent rights -- a position gener- ally more powerful than in the case of standard patents. The decision confirms that innovation patents are a power- ful and increasingly popular tool for rapidly obtaining and enforcing exclusive rights to an invention. This is good news for patent holders, but bad news for potential infringers. Combined with the accelerated grant and examination procedure for innovation patents (enforceable rights can be obtained in as little as three months, and there is no pre-certification opposition procedure), this provides a strong incentive to file applications for innovation patents. It is interesting to note that the Government has decided to grant patent protection for what might otherwise be considered an 'obvious' innovation while at the same time, to undertake a Senate review as to whether to exclude in- novation, such as gene technology from patent protection. Overall, the decision of the full Federal Court confirms that innovation patents are a powerful and effective tool to rapidly obtain and enforce exclusive rights to an invention.