Australia: The Importance Of "Ascertained" In Obviousness

The Full Federal Court (FFC) has dismissed an appeal by the Australian Patent Office (APO) against a Federal Court decision that US patents revealed in a novelty search did not satisfy the "ascertain" requirement for inventive step, and so could not be used to invalidate an Australian patent for obviousness. This case highlights the importance of the person skilled in the relevant art (PSA) in determining obviousness or lack of inventive step in Australian patent law.

Under the Australian Patents Act, a prior publication must be a document which a PSA "… could be reasonably expected to have ascertained, understood and regarded as relevant..." before a prior publication can be used to assess the obviousness of a claimed invention.

Australian Patent No. 662655 (the Patent) claimed a removable tag for use as an indicator of a tackle in a game of touch football. The tag was attached

to the clothing of a player so that removal of the tag during play constituted a tackle. The Australian Football League requested re-examination of the Patent based on eight US patents which described a similar tag for use in playing touch or "flag" football, according to the rules of American football or gridiron.

During re-examination, Emperor Sports amended the Patent so that its claims were limited to a device "when used in the game of Rugby League

or Australian Rules football". This amendment limited the claims from being for a device per se to being for a device in situ; that is, a device when used for its intended purpose. This amendment was sufficient to distinguish the claimed invention from the US patents in terms of novelty, since the US patents did not disclose using their respective devices in a game of Rugby League or Australian Rules football.

On the ground of obviousness, the APO concluded that the amended claims were obvious in view of the US patents. The APO held that the US patents were documents which the PSA could be reasonably expected to have ascertained, understood and regarded as relevant. The "ascertain" requirement was satisfied because it was reasonable to expect that the PSA (being a coach, referee, umpire, former player or an administrator of Rugby League or Australian Rules football) would have referred to patent literature to remain informed of developments in the technical field. Consequently, the US patents could be considered to determine whether or not the amended claims were obvious.

Emperor Sports appealed to the Federal Court (FC), which held that in the absence of any evidence, there was no reason for the APO, as represented by the Commissioner of Patents, to decide that the PSA would have ascertained the existence of any of the US patents and was "relegated to speculation". Consequently, the cited US patents did not satisfy the "ascertain" requirement and were excluded from the determination of obviousness of the amended claims. Emperor Sports' appeal was upheld: Emperor Sports Pty Ltd. -v- Commissioner of Patents (2005) 66 IPR 46; [2005] FCA 996. The APO appealed to the FFC.

In a joint judgement, the FFC dismissed the appeal, but held that evidence to satisfy the "ascertain" requirement would be necessary only where it would not be reasonably expected for the PSA to conduct

a search for the prior publication, such as a patent literature search.

The FFC held that it was contrary to the Patents Act to assume that the PSA could ascertain all prior publications anywhere in the world or revealed in a novelty search. Instead, the "ascertain" requirement must be assessed in view of the characteristics of the PSA and the particular problem faced. Obviousness was not an abstract issue, but one which was to be determined in the context of the particular alleged inventive step.

Consequently, evidence of whether a PSA could be reasonably expected to ascertain a prior publication may not be required. For example, in high technology areas, no evidence would be required, as it will usually be assumed that the PSA will be familiar with the major professional or academic journals and could reasonably be expected to consult them.

The FFC noted that the APO Manual of Practice and Procedure stated that any patent document found in a novelty search report could be assumed to satisfy the "ascertain" requirement when determining obviousness. The FFC said that this statement could not be universally applicable and there may be situations where it would not be reasonable to

make such an assumption.

The FFC ruled that the present case was such a situation. It was self-evident that it could not be reasonably expected that the PSA, being a Rugby League or Australian Rules coach, referee, umpire or administrator, would conduct a patent literature search of the US Patent Office. "Such an expectation would be fanciful rather than reasonable". Accordingly, the FFC dismissed the appeal.

If the FFC had adopted the reasoning of the FC decision, it would have had a significant impact upon the way in which the APO examines and grants patents. The FC had held that the same principles should apply to pre-grant examination and post-grant examination. Therefore, the onus would have been upon the APO to provide evidence to satisfy the "ascertain" requirement before raising any obviousness objections based on prior publications. This would have placed a significant evidentiary burden upon the APO and would likely have resulted in patent applications being allowed with claims broader than perhaps justified.

Instead, the FFC held that, depending on the technology involved, it could be assumed that any prior publications found in a novelty search satisfies the "ascertain" requirement and therefore evidence would not be required.

In this case, due to the low sophistication of the technology involved, the PSA was not reasonably expected to conduct a search of the patent literature when considering the problem in the Patent. Consequently, the US patents did not satisfy the "ascertain" requirement and thus could not be used to determine the obviousness of the amended claims.

The main effect of this case is that for some technologies, an applicant could secure allowance of its patent application by requesting the APO

to provide evidence to satisfy the "ascertain" requirement to maintain obviousness objections. However, the application of this decision is limited to less complex or sophisticated technologies, where it is unlikely that the PSA would ordinarily consult prior publications, such as patents and academic or professional journals, or conduct searches for prior publications.

Furthermore, the decision does not preclude a third party from establishing that a prior publication forms part of the common general knowledge in Australia.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.