Australia has just had its second federal court decision involving our rather controversial second tier patent system, the innovation patent. In the case, Seafood Innovations Pty Ltd v Richard Bass Pty Ltd [2010] FCA 723 (July 12 2010), the plaintiff sued over two innovation patents in the field of fish processing machinery. It is noteworthy that the second of the innovation patents was granted after the litigation had commenced and the plaintiff had seen a detailed response from the defendant on non-infringement.
Importantly, the judge confirmed prior authority that, unlike standard patents, no inventive step/obviousness test applies to an innovation patent. The peculiar pseudo novelty innovative step test – does the refinement make a substantial contribution to the working of the invention? – was accepted and adopted by the judge, effectively meaning that the defendant could not mount any attack in relation to the obviousness of the innovation patent.
The first innovation patent was found to be not infringed. The second innovation patent was found to be invalid on the dubious ground of lack of features in the claims. It is debatable whether the judge's position would be upheld in higher courts.
Although the patentee was not successful in this case, it highlights the fact that innovation patents are recognised in Australia as important litigation tools. Moreover, there appears to be no legislative desire to introduce an obviousness test. Patentees would be well advised, therefore, to consider taking advantage of the Australian innovation patent system not only to protect innovations that may not reach the inventive step threshold but also as an adjunct to standard patents with a view to utilising the innovation patent during litigation. As with all patents, however, careful and strategic drafting of the claims by an experienced attorney is recommended in order to ensure that an innovation patent will withstand the rigours of litigation.
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| Peter Treloar |
Shelston IP
Level 21, 60 Margaret Street
Sydney NSW 2000
Australia
Tel: +61 2 9777 1111
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email@shelstonip.com
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