Albany Molecular Research Inc v Alphapharm Pty Ltd  FCA 120 (18 February 2011)
Many Australian practitioners have long thought that the scheme of the Australian Patents Act 1990, and specifically section 7, allows for the possibility that a claim could fail the test of novelty prescribed by subsection 7(1), and yet pass the test for inventive step that is separately prescribed in subsections (2) and (3). While this is interesting to contemplate as an academic exercise, as a practical matter there is generally no need to devote significant effort to assessing inventive step once a want of novelty has been established. Certainly this is the view of a majority of patent examiners at IP Australia, who are inclined to open objections with statements such as ‘…claim 1 lacks novelty (and does not involve an inventive step) in light of D1, which discloses…”.
But clearly this view is not shared by Justice Jessup of the Federal Court of Australia who, to be fair, no doubt felt somewhat constrained by certain precedential appeal decisions of the full bench of the court.
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