Of course, it would be unjust to make the changes retrospective – there could be many patents previously granted, and applications previously filed, which would have been rendered invalid overnight. So the new laws apply only to those applications and patents in which a request for examination is filed on or after 15 April 2013.
My previous article on this topic included some astonishing statistics on the number of new applications filed in the weeks leading up to commencement of the Raising the Bar reforms. I have since heard that in the first two weeks of April, around 16,000 requests for examination were filed. To put this in perspective, in 2012 IP Australia granted a total of 17,724 patents, so those two weeks’ of requests alone added the better part of a year’s worth of examination work to the pipeline.
If you have only a casual interest in Australian patent law, or you have not been following the subject for very long, you might think that there are now two different standards of inventive step to keep in mind when considering the validity of Australian patents and applications. However, you would be wrong. In fact, right now there are live Australian applications and patents variously subject to no fewer than four different standards of inventive step.
The 1952 Act StandardThe current Patents Act 1990 came into force on 30 April 1991, repealing the former Patents Act 1952. At the time, patents had only a 16 year maximum term, however this was subsequently increased to 20 years. In addition, the Intellectual Property Laws Amendment Act 1998 introduced the system for extension of term of patents relating to pharmaceutical substances by up to five years.
As a result, there remains a handful of patents filed prior to the commencement of the 1990 Act which are still in force. Right now, in fact, there are 51 such patents.
Technically, since the 1952 Act was repealed, the 1990 Act applies to these archaic patents. However, under the transitional provisions in sections 233 and 234 of the 1990 Act, no patent originally filed under the 1952 Act can be found invalid on any ground that would not have been available under the earlier Act.
The High Court settled the interpretation of these provisions in Aktiebolaget Hässle v Alphapharm Pty Ltd  HCA 59. Essentially, the law of inventive step established under the 1952 Act in Minnesota Mining & Manufacturing Co v Beiersdorf (Australia) Ltd  HCA 9 continues to apply to patents granted under the old Act.
The standard for inventive step that was developed under the 1952 Act was very low. The claimed invention can be compared only with the common general knowledge of the person skilled in the art in Australia, i.e. the everyday stock-in-trade of the relevant Australian worker in the field. It is not permissible to compare a claimed invention against prior art, such as pre-existing published documents or products, unless it can be shown (by suitable evidence) that these are part of the common knowledge in Australia. No matter how obvious a claimed invention might be when compared with a prior publication, the claim cannot be invalidated on this basis unless the publication is proven to be notoriously well-known.
The Original 1990 Act StandardWith the 1990 Act, the government of the day sought to raise the standard of inventiveness required for a valid patent above the low-water-mark set by the Minnesota Mining decision.
For patents filed in the early years of the 1990 Act – on or after 30 April 1991 – inventive step may be assessed not only against the common general knowledge in the art, but also against a single item of prior art information (typically a single document, or a single public act), so long as ‘the skilled person … could, before the priority date of the relevant claim, be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in the patent area’ (Patents Act 1990, original section 7).
The ‘patent area’ means ‘Australia’, and as originally enacted, the Patents Act 1990 still requires that the person skilled in the art, and the common general knowledge, be limited to Australia. Also, while prior art documents could, in principle, be published anywhere in the world, prior acts (e.g. public use or sale) remained limited to Australia.
Furthermore, prior art information is only admissible if it can be shown that it would have been ‘ascertained, understood and regarded as relevant’ by the skilled worker. This requirement has routinely proven to be a stumbling block, particularly in fields of endeavour in which it is not common for workers to conduct searches, or refer to the patent literature, when developing new ideas.
The most extreme example of this is probably the Emperor Sports case (Commissioner of Patents v Emperor Sports Pty Ltd  FCAFC 26, on appeal to a Full Bench of the Federal Court of Australia). There, the alleged invention involved tear-off strips of material for use in touch Australian rules football and rugby games. The court found that the relevant ‘person skilled in the art’ was a football coach, who could not be expected to have found a prior US patent document disclosing essentially the same invention, but intended for use in American football. As a result, the claims were found to be inventive!
The Revised 1990 Act StandardIn the early 2000’s, the Howard government made a further attempt to raise the requirement of inventive step in Australia. A draft of the bill which became the Patents Amendment Act 2001 originally sought to delete the requirement that prior art information be ‘ascertained, understood and regarded as relevant’. However, a political compromise to secure the support of the (now defunct) Australian Democrats party in the Senate led to this language being retained.
Nonetheless, from 1 April 2002 it became permissible, when assessing inventive step, to combine the teachings two or more items of prior art information, so long as the skilled person could ‘be reasonably expected’ to have done so – after, of course, having already ‘ascertained, understood and regarded as relevant’ the multiple sources of information sought to be combined.
Additionally, the 2001 Amendment Act expanded prior use to include public disclosure by acts occurring anywhere in the world, and not just within Australia.
The ‘Raising the Bar’ StandardAs of 15 April 2013, Australia finally has a standard of inventive step which is comparable to other developed nations:
- all prior art information is available as the basis for assessment, whether in or outside Australia, and whether or not the inventor should or could have known about it and/or it would have been ‘ascertained, understood and regarded as relevant’;
- sources of prior art information may be freely combined – although this will presumably only be permissible where it would be obvious for the skilled person to do so; and
- the relevant common general knowledge assumed to be available to the skilled worker is based on a global standard, rather than being limited to Australia.
A real worker in the field may never look at a piece of prior art: for example he may never look at the contents of a particular public library or he may be put off because it is in a language he does not know. But the notional addressee is taken to have done so. This is a reflection of part of the policy underlying the law of obviousness. Anything which is obvious over what is available to the public cannot subsequently be the subject of valid patent protection even if, in practice, few would have bothered looking through the prior art or would have found the particular items relied on.
SummaryWhen assessing ‘obviousness’ of claims in an Australian application or patent, it is necessary to determine which version of the law applies.
- if the patent has a filing date earlier than 30 April 1991, then the 1952 Act’s ‘common general knowledge only’ standard applies.
- if the patent has a filing date on or after 30 April 1991, but prior to 1 April 2002, then the original 1990 Act standard or ‘common general knowledge plus one, ascertained/understood/relevant item’ standard applies;
- if the patent or application has a filing date on or after 1 April 2002, and a request for examination was filed prior to 15 April 2013, then the revised 1990 Act standard of ‘common general knowledge plus one or more, ascertained/ understood/relevant items’ standard applies; and
- if the patent or application was filed after 15 April 2013, or was filed before this date but examination was requested after 15 April 2013, then the ‘Raising the Bar’ standard applies, permitting more flexible selection and combination of prior art information.
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