Tasmanian Pipped at the Post


A Tasmanian company has been found to infringe innovation patents for roadside posts by the Federal Court (Delnorth Pty Ltd v Dura- Post (Australia) Pty Ltd [2008] FCA 1225 (13 August 2008)). 

The Tasmanian Company, Dura-Post Pty Ltd of St Leonards, manufactures flexible posts which rebound to the vertical position on vehicle impact.

The patent owner, Delnorth Pty Ltd is a New South Wales company. Delnorth holds three innovation patents covering various aspects of its roadside posts. These posts return to the upright position when hit by a vehicle. Innovation patents are a lower tier level of protection for inventions. This type of patent was introduced into Australia in 2001. Instead of requiring an " inventive step " as is the case for standard patents which have a term of 20 years, innovation patents only require an "innovative step" and have an eight year term. 

Evidence during the case showed that Dura-Post produced a similar post years before the patent owner applied for its patents. Because Dura-Post kept its development secret this could not be used to invalidate Delnorth's innovation patents. Further, as Dura-Post did not apply for a patent, it missed out on patent rights for the post it developed. It is unclear why Dura-Post did not patent its development in 1999 using the petty patent system, the forerunner to today's innovation patents, which was available at that time.  It may be that they did not seek the advice of a qualified Patent Attorney. 

The result of the recent court decision is not entirely bad news. Although Dura-Post infringed the innovation patents, certain aspects of two of the patents were found invalid because of lack of innovative step in light of a US patent so there may be room for Dura-Post to manoeuver in terms of any future product. 

This case highlights the need for companies to be aware of intellectual property issues. In particular, companies need to be asking whether their developments are protectable not only through the use of the patent system but using other IP registration systems such as designs and  trade marks. 

Companies also need to keep an eye on competitors' activities to avoid potentially costly litigation. Advice from a Patent Attorney in these situations is invaluable. Patent Attorneys are qualified professionals who are specially trained in patent law to advise on patentability and patent infringement. They also prepare and prosecute patent applications. 


© Julie Harkins 2008