Cronk v Commissioner of Patents  FCA 37 (10 February 2014)
The Australian Patent Office has taken the (to my knowledge) unprecedented step of engaging an expert witness to assist in the defence of a Federal Court appeal from a decision to reject a patent application. Furthermore, in a result that should act as a warning to future applicants finding themselves in a similar position, the approach has been successful!
The commencement on 15 April 2013 of the ‘Raising the Bar’ IP law reforms lifted the standard of inventive step (or nonobviousness) in Australia to a level comparable with that of comparable developed economies, such as the US and Europe. However, the less stringent former law continues to apply to the multitudes of patents granted prior to the reforms, and to a majority of the thousands of applications that were still pending when the law changed.
But even before the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 had been drafted, IP Australia had announced its intention to begin the process of raising standards through changes in examination practice that would include a more rigorous approach to assessing inventive step. This may have been the reason for the difficulty experienced by applicant Paul Andrew Cronk in overcoming the rejection of his application no. 2008229901. An examiner’s rejection of the majority of claims in the application was upheld following a Patent Office hearing. I wrote about this original decision back in May of 2012.
This outcome was unusual in itself. Historically it has been very difficult for the Patent Office to maintain objections of obviousness, or lack of inventive step. The inquiry into whether or not a claimed invention is obvious or not is strongly evidence-based under Australian law. An applicant who provided even relatively weak evidence of inventiveness has usually been able to prevail, since the examiner is rarely in a position to provide any evidence at all, beyond documents found in the prior art search.
Standing by a rejection of this type was therefore a bold move, leaving the applicant with the options of abandoning the application, or appealing to the Federal Court. Mr Cronk called the Patent Office on its decision, and appealed. The Patent Office, in turn, raised the stakes, and obtained new evidence for use in the appeal. The court has found that the Patent Office’s evidence is more relevant and credible, and dismissed Mr Cronk’s appeal.
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