Hearing in relation to re-examination of patent application after acceptance – basis for re-examination – whether amendments allowable – whether claims novel under ‘reverse infringement’ test – whether skilled person would have found prior art document available via the internet – whether Commissioner requires formal evidence as basis for factual inferences – whether claims involve an inventive step
A method of cultivating plants including the step of harvesting the plant at a time within a period of 5 days prior to a lunar apogee and 5 days after the lunar apogee [i.e. the point at which the moon is at its greatest distance from the earth in its slightly elliptical orbit] in any given cycle.
A routine quality review following acceptance resulted in documents being found that had not been considered during examination and which appeared to anticipate the claimed invention in the accepted claims. A re-examination was initiated under section 97(1) of the Patents Act 1990. A re-examination report was issued on 23 April 2010 finding the accepted claims either not novel or not inventive.
Notwithstanding the considerable breadth of the above claim (which must surely be inadvertently infringed on a regular basis by many plant growers unconcerned with the location of the moon), we suspect that the real interest in this patent application lies in the subject matter of the main embodiment described in the specification. In the words of Hearing Officer Greg Powell, who was responsible for the Patent Office decision:
The preferred embodiment focuses on cannabis and particularly the amount of tetrahydrocannabinol (THC) that is present (i.e. its “potency”) when the plant is harvested. There is also some briefer discussion on the “Stinging Tree” and the “Stinging Nettle” and the potency of their sting, sugar cane with respect to its sugar content and vegetables and herbs generally with regard to taste, flavour and shelf life. It is stated in the specification that these characteristics vary in time with the lunar apogee-perigee-apogee cycle – also known as the “anomalistic cycle”.
RE-EXAMINATION AND PRIOR ARTThe only available grounds for re-examination are lack of novelty and lack of inventive step, i.e. the ‘prior art’ grounds. It was therefore not open to the Hearing Officer – and is unnecessary for us – to go into other potential grounds of invalidity, such as lack of utility (usefulness). Certainly there is, we might say, a certain lack of scientific rigour in both the patent specification and the prior art. However, this is not relevant to the grounds for re-examination.
The prior art is available on the Internet for anyone to obtain: H P Singh et al , eds., Precision Farming in Horticulture, Proceedings of the National Seminar-cum-Workshop on Hi-Tech Horticulture and Precision Farming, Lucknow, India, 26-28 July 2002, specifically Paper No. 21, by R K Pathak and R A Ram, ‘Approaches for Green Food Production in Horticulture’, pp. 275-394.
There is a simple graphic explaining the lunar apogee on page 281 of the reference, and on page 282 there appears the following statement:
Apogee (new moon) — when the moon is farthest from the earth. This occurs every 27th and 1/2 days. Owing to moisture deficiency, harvesting and seed storage practices show better response.
AMENDED CLAIMSAt the hearing, the applicant did not contest that the accepted claim 1 lacked novelty in light of the prior art disclosure. Rather, the applicant’s submissions were directed primarily to an amended claim, filed in the course of re-examination on 6 September 2010, in the following terms:
A method of cultivating plants including the step of harvesting the plant at a time within a period of 5 days prior to a lunar apogee and 5 days after the lunar apogee in any given anomalistic cycle on a systematic basis in different anomalistic cycles.
The applicant had made further attempts subsequently to amend the claims to include a specification of a time of day for harvesting – namely between moonset and moonrise, when the moon is even further away from the harvest location due to being on the other side of the Earth. However, these amendments were found not to be allowable, due to a lack of adequate support in the specification.
NOVELTYWith regard to the amended claim 1, the applicant argued that there was ‘no clear and unmistakable direction [in the prior art reference] to harvest on a systematic basis in different anomalistic cycles’.
The Hearing Officer disagreed, citing the basic test for novelty as the ‘reverse infringement’ test, i.e. whether following the teaching of the prior art would inevitably lead the relevant person skilled in the art to do something falling within the scope of the claims (General Tire & Rubber Co. v Firestone Tyre & Rubber Co. Limited  RPC 457 and Meyers Taylor Pty. Ltd. v Vicarr Industries Ltd.  HCA 19). He considered that, for ‘systematically harvestable’ plants (i.e. those which are repeatedly harvested, such as fruit trees or tea plants), a grower following the prior art teaching to harvest at the lunar apogee would inevitably end up harvesting multiple times during different lunar cycles (paragraph ).
Accordingly, the claim was anticipated by the prior art teaching.
INVENTIVE STEPWhile certain dependent claims recited subject matter that was not explicitly disclosed in the prior art reference, the Hearing Officer considered these claims to be obvious, assuming that the Singh publication could be used as the starting point for the inventive step analysis.
Section 7(3) of the Patents Act 1990 requires that, for a prior publication to be used as the basis for a finding of obviousness, the person skilled in the art must ‘be reasonably expected to have ascertained, understood, [and] regarded as relevant’ the information in the document. In adversarial proceedings (such as patent opposition or litigation) this is generally a matter on which expert evidence is required, to establish exactly what the relevant skilled person could reasonably be expected to do and to understand.
The applicant argued that in this case the skilled person, e.g. a farmer, could not reasonably have been expected to have found the Singh document and that, in any event, the Examiner had not established the contrary by way of suitable evidence.
The Hearing Officer was unswayed by this argument. Firstly, he was satisfied that a document that was freely available on the internet, and which could be found using a suitable web search, would reasonably have been found (i.e. ‘ascertained’) by anyone with an internet connection (paragraphs -).
With regard to the evidence issue, the Hearing Officer referred to the decision of the Full Federal Court in Commissioner of Patents v Emperor Sports Pty Ltd  FCAFC 26, at :
The Commissioner is an administrative decision-maker equipped with technical expertise. Subject to the rules of natural justice both common law and statutory … he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations.
As such, the Hearing Officer concluded that the Commissioner of Patents does not necessarily require formal evidence, e.g. in the form of declarations by expert witnesses, in order to draw reasonable inferences (paragraph ).
Therefore, the remaining dependent claims lacked an inventive step in light of the prior art teaching.
DIVISIONAL APPLICATIONIn a final note, the Hearing Officer expressed fairly stern disapproval of the applicant having filed a divisional application (no. 2011201254) prior to the hearing. While the law currently permits filing of divisional applications at any time prior to grant of the parent application, the Patent Office is unimpressed by the practice of filing such applications after the end of the opposition period. At this stage, the claims of the divisional must be within the scope of the claims as accepted in the parent case, which means that the only value of the application is as insurance in case the parent is ultimately refused. As the Hearing Officer stated in this case (at ):
The fact that the applicant requested a hearing in the present re-examination matter clearly signals that they believe the current application is acceptable and should proceed to grant. If that is the applicant’s belief, why file another application? If it was filed as “cover” in case the applicant was unsuccessful in re-examination, it has made the process surrounding the hearing and this decision a complete waste of time and resources for the Commissioner and the applicant. Furthermore, it has introduced uncertainty for the public about whether a patent will be granted on this invention and introduced considerable delay. These are not desirable outcomes.
The applicant has therefore been put on notice that should the divisional application proceed, the inevitable outcome will once again be refusal, not only on grounds of lack of novelty and inventive step, but also on the other grounds that are available during examination but not re-examination.