A recent decision of the Australian Full Federal Court has provided a timely reminder of the law of inventive step in Australia.
Under Australian Patent Law, 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 art in light of the common general knowledge (defined in sub-section 7(2) of the Australian Patents Act 1990). This common general knowledge may be considered together with any piece of prior art information being information that a person skilled in the art could be "reasonably expected to have ascertained, understood and regarded as relevant" (defined in sub-section 7(3) of the Act). Only after these requirements have been met, can an assessment be made as to whether the claimed invention would have been obvious.
When examining patent specifications, the Australian Patent Office has assumed that a person skilled in the art would routinely review patent specifications, and would therefore, be expected to ascertain any prior art patent specification. A decision of the Full Federal Court puts this practice into question.
The Emperor Sports Patent
The patent in suite, Patent No 662655 in the name of Emperor Sports, relates to a device for use in touch football (i.e non-contact sport), where the progress of a ball-carrying player is stopped by an opponent's touch, without the need to tackle the player. The invention provides a device incorporating a tag which is removably attached to the clothing of a player, the removal of which by an opposing player counts as a "touch".
The patent was granted and the Patent Office subsequently received a request from the Australian Football League (the body that controls elite level Australian Rules Football) seeking re-examination by the Commissioner under s 97(2) of the Patents Act 1990. The request alleged want of novelty and lack of an inventive step in light of eight United States Patents.
During the re-examination process, and prior to the hearing, the patentee proposed several amendments to restrict the claims to use of the claimed invention to the game of Rugby League and Australian Rules Football. In addition, the patentee argued that the person skilled in the art, namely a Rugby League or Australian Rules coach, referee, umpire or administrator, did not routinely conduct searches of the patent literature.
In spite of the patentee's efforts in proposing amendments to the claims, the delegate of the Commissioner of Patents concluded that, even if the amendments were allowable (which the Delegate believed they were not), the claimed invention would still be obvious in light of the matter disclosed in the US Patent specifications. The Delegate asserted that it would be reasonable for a person skilled in the art to have reviewed the patent literature and would therefore have ascertained the US Patent specifications, and the patent was revoked.
Emperor appealed the decision to the Federal Court, where Justice Lindgren held that:
"in the absence of evidence, the Commissioner was not at liberty to decide whether a hypothetical person skilled in the art would have ascertained the existence of the cited documents. In the absence of evidence, the Commissioner was relegated to speculation."
Consequently, the US patent specifications were removed from the inventive step considerations and the invention was found to have the requisite inventive step.
This decision potentially makes it more difficult for the Australian Patent Office to find an invention lacking an inventive step. An applicant may be able to argue that it would not be reasonable to expect that the cited patent specifications would have been ascertained. Some practitioners have even gone so far as suggesting that this decision could lower the threshold for patentability in Australia by restricting the relevant prior art base. The Commissioner of Patents subsequently appealed the decision to the Full Federal Court1.
Full Court Decision
The Full Court agreed with the conclusion by J. Lindgren although for different reasons. Their Honours Heerey, Kieffel and Bennett held that in some circumstances, such as high technology areas, it would usually be assumed that the relevant skilled person would be familiar with the major professional or academic journals and could reasonably be expected to consult them. No evidence is required.
However, when identification of relevant prior art is in dispute "it is necessary to have either evidence or, which amounts to the same thing, reliance by an administrative decision-maker of expertise appropriate to the office."
In addition, their Honours held that the term "ascertained" has the meaning as in the Oxford English Dictionary: "To find out or learn for certainty by experiment, examination or investigation; to make sure of, to get to know".
In the present case, Rugby League or Australian Rules coach, referee, umpire or administrators could not reasonably be expected to conduct a search in the United States Patent Office. Such an expectation, according to the Full Court, would be "fanciful rather than reasonable".
At both instances, the Commissioner's contention that the person skilled in the art would have ascertained the US patent specifications was held to be unreasonable, and indeed the Full Court held that it would have been "fanciful". The use of such strong language casts some doubt on the Patent Office's practice of assuming that any patent specification of major countries would reasonably be expected to be ascertained. In our opinion, this decision is not the sea-change that some practitioners may have thought it might be, but a reminder of what is required by the Patents Act 1990.
For further or more specific information on the law of inventive step in Australia, please contact Chris Owens (firstname.lastname@example.org), Marcus Caulfield (email@example.com) or any of the other practitioners of FB Rice & Co via our website at www.fbrice.com.au.
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