Roadside posts – protecting innovation for SMEs

The Commonwealth Government introduced the Innovation Patent into Australian law in 2001 with the intention of stimulating innovation by Australian SMEs.  The intention was for SMEs to benefit from a relatively rapid, cost effective form of intellectual property protection for their lower level or incremental inventions, and thereby obtain a first to market-place advantage.

An Innovation Patent is generally granted within one month following the submission of an application, and only requires a formalities check by IP Australia as to legibility, application details etc.  However, before the monopoly rights claimed in an Innovation Patent can be enforced, the invention must be examined and certified.  While the elements required for the successful examination of an Innovation Patent are largely the same as for a standard patent, the Innovation Patent has a lower ‘innovative step’ requirement.  In keeping with this lower threshold, the Innovation Patent grants an 8 year monopoly right as opposed to 20 years for a standard patent.  However, with little judicial consideration of the meaning of ‘innovative step’ there has been some uncertainty as to the scope of protection offered to SMEs in seeking an Innovation Patent for their ‘lower level’ innovations.  The decision in Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd is a step towards clarifying this uncertainty.

Dura-Post (Australia) Pty Ltd v Delnorth Pty Ltd

Delnorth was the owner of three innovation patents for an invention relating to ‘roadside posts’ sold under the brand ‘Ezy-Drive Steel Flex’.  These posts were used in the ground adjacent to roadways to signal the ‘location of traffic lanes, highway centre lines, and the like’ and had a characteristic ‘ready flexibility’ when impacted by vehicles with the ability to spring back into shape.  In particular, the posts incorporated the feature of sheet spring steel being elastically bendable through 90º with additional features such as a marker to identify the depth a post would be driven into the ground and a tapered end to help driving the post into the ground.

Delnorth alleged that the sale of the ‘Flexi-Steel’ brand of post by Dura-Post was an infringement of its innovation patents.  Dura-Post counter-claimed that the Delnorth innovation patents were invalid.  An element for consideration by both the originating and appeal courts was the interpretation of section 7(4) of the Patents Act 1995 (Cth).  The provisions of this section are required to be met for an ‘innovative step’, and an element for consideration was essentially whether the claimed invention varied from the prior art base in ways that made a substantial contribution to the working of the invention.

On appeal, the Full Federal Court found:

• The presence or absence of a substantial contribution involves a finding of fact as to whether there has been a ‘real’ or ‘of substance’ contribution. The process will involve a comparison of the variations between the invention claimed and the prior art base.
• A comparison between the Delnorth innovation patents and the prior art base showed there had been a substantial contribution to the working of the claimed invention. For example, the depth marker for installing the roadside post to the correct depth, and the tapered end to assist driving the post into the ground (which were not described in the relevant prior art) made a substantial contribution to the way the roadside posts functioned.
• The validity of the Delnorth innovation patents was upheld, and Dura-Post’s appeal was dismissed with the implication that it had infringed aspects of the Delnorth innovation patents.

This decision strengthens the availability of Innovation Patents as a viable alternative to standard patents, and provides SMEs with a clearer road map on the enforceability of intellectual property protection for ‘lower level’ inventions incorporated into their products.

Our intellectual property lawyers are able to assist you with strategies to protect, enforce and defend your intellectual property rights.

Author: Noelene Treloar