Ten Years of Raising the Bar – The Inventive Step

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 made two changes to the inventive step test in Australia. The first was to remove the geographical limitation to the scope of common general knowledge. The second was to remove the requirement that a prior art document be one that would have been “ascertained, understood and regarded as relevant” by the skilled person. At a practical level, these changes have altered the way in which evidence is prepared in oppositions and court proceedings, mostly for the better. However, neither could be said to have significantly “raised the bar” of the broader inventive step assessment. 

According to the Explanatory Memorandum to the Raising the Bar Act, the first change was intended to result in greater consistency with other major patent jurisdictions, allowing parties in court and opposition proceedings a larger pool of experts from which to draw evidence. At this level, the change has achieved its stated goal and has simplified the task of working with overseas expert witnesses.

The stated goal of the second change was to better align the approach to inventive step in Australia with that taken in other major jurisdictions. Importantly, however, the change was explicitly not intended to substantially change the operation of the existing tests for inventive step as applied to the prior art base. Again, this change has simplified the preparation of evidence in oppositions and court proceedings, removing the need to demonstrate that a skilled addressee would consult patent literature or conduct hypothetical literature searches. This change may also have altered the outcome of the inventive step test in the relatively few areas of technology where it might have been argued that the skilled addressee would not consult foreign patent documents (see for example Emperor Sports[1]).

Subsequent to the Raising the Bar Act, the Productivity Commission, recommended further substantive alterations to further raise the fundamental threshold of the inventive step test. To date, those recommendations have not been acted on. While the changes made to the inventive step test may seem modest by comparison to others made by the Raising the Bar Act, from the perspective of practitioners they have substantially streamlined the process of evidence preparation.


[1] Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26


BEng(Civil)(Hons) LLB LLM FIPTA

Adrian is an intellectual property lawyer who combines legal expertise with deep technological knowledge to advise Australian and international businesses in the resolution of commercial IP disputes.