Australia: Court decision highlights difficulty in challenging innovation patents

Last Updated: 25 August 2017
Article by Helen Macpherson

Late last month, Justice Burley handed down his decision in Doric Products Pty Ltd v Asia Pacific Trading (Aust) Pty Ltd [2017] FCA 849. The decision provides a useful illustration of how Australian Courts will approach construction, infringement and validity issues in innovation patent proceedings, and emphasises the difficulties respondents face when challenging the validity of innovation patents.

The patentee, Doric Products Limited (Doric), commenced proceedings against Asia Pacific Trading (Aust) Pty Ltd (APT), alleging that APT had infringed the claims of its innovation patents 2012100818 (818 Patent) and 2012100260 (260 Patent), by importing, selling and offering to sell a window winder called the "APT Product." APT cross-claimed, alleging that the asserted claims of both patents were invalid on grounds of lack of novelty and innovative step.

The innovation patents in question were both entitled 'a window winder' and related to a manually operated device for opening and closing windows. While such devices were certainly not new, the invention described in the patents included an adjustable stop means which allowed the user of the device to vary the degree to which the window could be opened without the need to access the internal mechanisms of the device.

In relation to infringement, Justice Burley found that the APT Product comprised each of the essential integers of the claims of the 260 Patent – namely, a 'body,' a winder mechanism mounted to the body, an 'elongated flexible element' (or chain) extending from within the body to attach to the window panel, a sprocket driven by the winder mechanism to move the chain, and an adjustable stop member which could be moved between predefined positions in the body to change the maximum length of the chain. His Honour rejected a submission by APT's expert witness that the winder mechanism of the APT product was mounted to the 'cover' of the device, as distinct from its 'body,' finding that 'body' in the context of the patent claims comprised the 'main or central part of the device.'

On the other hand, Justice Burley found that the APT Product did not infringe the claims of the 818 Patent because it did not comprise a stop means which was moveable 'by insertion and removal.' Burley found that 'insertion and removal' in the context of the 818 Patent meant insertion and removal from the body of the device. Importantly, the stop means in the APT Product comprised a screw which had been 'mushroomed' at its end, so that it was not fully removable from the body of the device.

As to validity, Justice Burley found that the invention described in the 260 Patent was novel and involved an innovative step over the prior art relied upon by APT. In determining innovative step, Burley focused on two prior patent specifications raised by APT, one in the name of Tacheny, entitled 'chain operator for a window' (Tacheny), the other, in the name of Lambertini, entitled 'Actuator with adjustable stroke' (Lambertini).

Based on the evidence of the parties, the key difference between the 260 Patent and Tacheny was that the invention disclosed in Tacheny comprised a stop means designed to adopt different positions in the chain of the device, whereas the stop member in the 260 Patent was designed to adopt different positions in the body of the device. In Justice Burley's opinion, this was sufficient for the 260 Patent to involve an 'innovative step' over Tacheny.

The invention described in Lambertini was driven by a motor. His Honour found that, on a proper construction of the language of the claims, the 260 Patent taught a device that was operated by a user with a winding action, typically by winding a rotary handle. Consequently, his Honour found that the 260 Patent also involved an innovative step over Lambertini.

The decision in Doric is a good illustration of how innovation patent proceedings often turn on narrow issues of construction and technical distinctions. The low threshold imposed by the test of 'innovative step' means that innovation patents are often difficult to challenge. It is important to note that an invention is taken to involve an innovative step unless the invention would only vary from the prior art in ways which make 'no substantial contribution to the working of the invention.'

In its final report on Intellectual Property Arrangements in December last year, the Productivity Commission noted that this 'low threshold' has proved more harmful then helpful for Australian businesses – especially the small and medium sized enterprises the innovation patent system was meant to assist – and recommended that innovation patents be abolished.

In the meantime, innovation patents continue to be a powerful enforcement tool for patentees, and a formidable challenge for downstream innovators.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions