Impact of Novelty and Inventive Step in Determining Patentability in Australia

In the Australian patent system, novelty and inventive step form the core substantive tests for patentability. They are the principal filters through which every patent application must pass and are the most common grounds on which applications fail during examination or are later challenged in opposition and revocation proceedings. Understanding how these requirements operate, both legally and in practice, is essential for any applicant seeking enforceable and commercially meaningful patent protection.

Under Section 18(1)(b) of the Patents Act 1990 (Cth), an invention is patentable only if it is novel and involves an inventive step when compared with the prior art base as it existed before the priority date of the relevant claim. Although closely related, novelty and inventive step address different legal questions and are assessed in fundamentally different ways.

Novelty: Absolute Newness Under Australian Law

Novelty is concerned with whether the invention is new in an absolute sense. The statutory framework for novelty is set out in Sections 7(1) of the Patents Act 1990 (Cth). An invention lacks novelty if all of its essential features are disclosed in a single piece of prior art information forming part of the prior art base before the priority date of the patent application.

The “prior art base” in Australia is broad and includes any information made publicly available anywhere in the world, whether by written publication, oral disclosures, use or any other act. Novelty is assessed claim by claim, and the focus is on what the claim actually requires, not on the general idea or purpose of the invention.

Australian law applies the long-established anticipation principle, often described as the “reverse infringement” test, as established in cases like General Tire & Rubber Co v Firestone Tyre & Rubber Co Ltd [1972] RPC 457. In practical terms, the question is whether carrying out what is disclosed in the prior art would necessarily fall within the scope of the claim. If it would, the claim is not novel.

Anticipation requires more than resemblance or overlap; it must disclose all the essential features of the invention in a clear and unmistakable manner. For example, in Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545, it was held that for a prior art document to anticipate a claim, it must contain a clear, unequivocal, and complete description of the invention. Establishing the novelty of the invention often involves carefully amending the patent claims to more precisely define the invention and distinguish it from what is already known. A notable example is the case of Asahi Kasei Kogyo Kabushiki Kaisha v The Commissioner of Patents (1991) 100 ALR 470, where it was established that the prior art must be read through the eyes of a person skilled in the relevant art, and that the disclosure must provide enough information for the skilled person to put the invention into practice. A disclosure that is ambiguous, incomplete, or requires further invention does not destroy novelty. This distinction is central to how novelty objections are analyzed and overcome in practice.

Inherent Disclosure and the Limits of Novelty

Novelty can also be defeated by inherent disclosure. Where a claimed feature is an inevitable result of performing what is already known, the claim will lack novelty even if that feature was not previously recognized or expressly described.

This principle is frequently encountered in chemical and pharmaceutical inventions. For example, identifying a previously unknown mechanism of action for a known compound used in a known way will not confer novelty if that mechanism necessarily occurred whenever the compound was administered. Australian examination practice consistently reflects the principle that new insight into an old act does not make the act itself new.

Earlier Australian Filings and “Whole of Contents” Novelty Provision

A unique aspect of Australian patent law is the “whole of contents” novelty provision. This provision allows for a novelty objection to be raised based on the information contained in an Australian patent applications with earlier priority dates, even if those applications were not published at the priority date of later application.

The purpose of this provision is to prevent the grant of two patents for the same invention. When a “whole of contents” objection is raised, it is crucial to conduct a detailed analysis of the conflicting application. It operates strictly for novelty and does not apply to inventive step. When such objections arise, careful comparison of disclosures and claim scope is required, as even minor differences can be decisive.

Applicant’s Own Conduct: Disclosure and Secret Use

Novelty of an invention is not threatened only by the actions of others. An applicant’s own activities before filing a patent application can also have significant consequences.

Any public disclosure of the invention before the priority date, such as a presentation at a conference, a publication in a journal, or even a commercial sale, or an online disclosure, will generally form part of the prior art base and destroy novelty unless a limited statutory grace period applies.

Furthermore, “secret use” in Australia can also be a ground for invalidity as outlined in Section 18(1)(d) of the Patents Act 1990 (Cth). If an invention has been commercially exploited in secret before the priority date, a valid patent cannot be obtained. The rationale is to prevent applicants from effectively extending their monopoly by combining undisclosed commercial exploitation with the statutory patent term. Limited exceptions exist for reasonable trial and experiment, but these are narrowly construed and fact-specific.

Inventive Step: Obviousness as a Separate Inquiry

Inventive step requirement addresses a different question: whether the invention was obvious at the priority date. The statutory test is set out in Section 7(2) of the Patents Act 1990 (Cth).

An invention is considered to involve an inventive step if it is not obvious to a person skilled in the relevant art, in light of:

• common general knowledge in that field;
• certain prior art information that the skilled person could reasonably be expected to have ascertained, understood, and regarded as relevant.

Unlike novelty, inventive step allows for the consideration of multiple sources of information, provided the statutory criteria for their combination are satisfied.

Skilled Person and the Obviousness Assessment

A “person skilled in the art” is a hypothetical construct: a person with ordinary technical knowledge and skills, but no inventive capacity. The assessment of inventive step is one of the most contentious aspects of patent examination, as it involves a degree of subjectivity and requires careful legal and technical argumentation.

When an inventive step objection is raised, the examiner is essentially arguing that a person with ordinary skill in the field would have been able to arrive at your invention as a matter of routine, based on the existing knowledge. The assessment of inventive step is not limited to common general knowledge alone; it can also consider prior art information, including a single prior art document or a combination of documents, if a person skilled in the art could be reasonably expected to have combined them.

Guiding Principle for Inventive Step

A key test for inventive step in Australia is often referred to as the “Cripps question,” established in Aktiebolaget Hässle v Alphapharm Pty Ltd [2002] HCA 59. This test asks whether a skilled person, faced with the problem that the invention solves, “would have been led directly as a matter of course to try the claimed invention in the expectation that it might well produce a solution.” This is not a test of whether something was “obvious to try” in hindsight, but rather whether the path to the invention was a straightforward and predictable one. Another important case is Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, which established that the inventive step may reside in the identification of the problem itself, not merely in the solution. Where the prior art failed to recognize the true nature of a technical problem, that recognition can support an inventive step even if the solution appears straightforward once the problem is understood.

Indicators of Inventive Step

In arguing for the presence of an inventive step, several “secondary indicators” that suggest an invention is not obvious may be considered. These can be powerful tools in persuading an examiner of the merits of the invention. Such indicators include evidence that the invention satisfies a long-felt need in the industry, that others have tried and failed to solve the same problem, that the invention has achieved significant commercial success, or that competitors have copied the invention. In Winner v Ammar Holdings Pty Ltd (1993) 25 IPR 273, the Court recognized that the failure of others to find a solution to a known problem is a strong indicator of an inventive step.

Why work with us?

Novelty and inventive step operate as distinct but complementary gatekeepers under Australian patent law. They are applied rigorously by IP Australia and the courts, and failure on either ground is fatal to patentability. Effective patent protection depends on disciplined disclosure management, precise claim drafting, and a clear understanding of how these requirements are applied in practice.

Our team of experienced patent attorneys possesses a deep understanding of the intricacies of Australian patent law and the aspects of novelty and inventive step. When you receive an examination report with these objections, we don’t just see a roadblock; we see an opportunity to refine and strengthen your application. We will provide you with a clear and concise explanation of the objections, a realistic assessment of your options, and a strategic plan for moving forward.

Contact us today for a free consultation.