Inventive Step & Non-obviousness: Australian Patent Law Compared With the United States

blogObtaining valid patent protection includes satisfying certain requirements.  The requirements often differ in many jurisdictions.  One well-known, universal requirement is that an invention must be ‘new’ or ‘novel’ in light of what has been done before.  In many jurisdictions, another requirement is that an invention must also involve an inventive step or must not be obvious (in other words, must be non-obvious).

The basic principle behind inventive step and obviousness is essentially the same, however, assessment of whether an invention lacks or involves an inventive step, is obvious or non-obvious, varies from jurisdiction to jurisdiction.  For this reason, addressing an inventive step objection raised by an Australian examiner and an obviousness objection raised by an US examiner, for example, may require different response strategies.

Background – Australia

Section 7(2) of the Patent Act 1990 (Cth) provides that an invention is taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge.

When assessing an invention, Australian Courts apply the following test:

“The test is whether the hypothetical addressee faced with the same problem would have taken as a matter of routine whatever steps might have led from the prior art to the invention, whether they be the steps of the inventor or not.”

Aickin J in Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262 at page 286.


Background – United States

35 U.S.C. § 103 of the America Invents Act (AIA) provides that a patent for a claimed invention may not be obtained if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person skilled in the art.

Differences between Australia and the US approaches in practice

When assessing if an invention involves an inventive step or is not obvious, some practices are the same for both jurisdictions.  For example, if a prior art document or combination of documents, teaches away from the claimed invention, then both Australian and US examiners will typically accept the invention to involve an inventive step or not obvious.

However, there are some differences between Australian and US practices.  For example, under Australian practice, Australian examiners are usually limited to combination two documents and will often resort to asserting that the remaining features are obvious in light of the common general knowledge when raising Australian inventive step objections.

In contrast, US examiners typically rely on combining multiple documents when raising a corresponding obviousness objection.

Another difference between Australian and US patent practice is that if a US patent application is allowed, then it is likely that the corresponding Australian patent application claiming the same scope of protection will proceed to acceptance.  In reverse, however, if an Australian patent application proceeds to acceptance, then a corresponding US patent application claiming the same scope of protection as the corresponding Australian patent application may not proceed to allowance due to the greater flexibility that US examiners have with combining documents.

When filing in Australia, overseas attorneys may want to take these approaches into consideration. Please do not hesitate to contact us at if you would like to discuss.