The Intellectual Property Law Amendment (Raising the Bar) Act 2012 (Cth) (RTB Act) was introduced to overhaul Australia’s intellectual property (IP) system to bring it more into line with the IP systems of Australia’s major trading partners. The RTB Act made several important changes to the Patents Act 1990 (Cth), including in relation to the prior art base for the purposes of assessing inventive step. In particular, s 7(3) of the Patents Act 1990 (Cth) was amended to remove the requirement that the notional person skilled in the art (PSA) could be reasonably expected to ascertain, understand, and regard as relevant the information in the prior art base. Thus, any document or use that was publicly available anywhere in the world may now be used to base an attack on obviousness.

The Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (EM) discussed several problems with the “ascertained” restriction, mainly that information that is clearly relevant may be excluded on the basis that the PSA would not have ascertained that information. “Ascertained” simply means discovered or found^[1]. However, in litigation, this requirement often led to the need for a body of evidence to show such ascertainment, and challenges to whether certain documents met the required standard, adding cost and uncertainty to patent disputes.

The EM further noted that the requirements that prior art be “understood” and “regarded as relevant” are implicit in the pre-existing tests for inventive step, and that “… the changes to the legislation are not intended to substantially change the operation of the existing tests for inventive step as applied to the prior art base, or to permit hindsight analysis. … Rather, the tests will continue to take account of factors such as whether the skilled person would have understood and appreciated the relevance of the prior art to the problem the invention was seeking to solve and whether it would be considered a worthy starting point for further investigation or development.”

The Federal Court has subsequently confirmed^[2] that an assumption that the skilled reader is in possession of, and read and understood, certain prior art, does not mean that all prior art will be considered equally interesting. The skilled reader is not assumed or compelled to use any information in a document and may well disregard it. The Examiner’s Manual similarly indicates that “[t]he inventive step test will continue to take account of the nature and relevance of the prior art in the context of the problem the invention was seeking to solve.” ^[3]

Thus, the extent to which a prior art document would be considered “relevant” to a particular technical problem appears to remain part of the overall assessment of whether the invention was obvious in light of such prior art.

Documents “understood” and “regarded as relevant”

To the extent that arguments might previously have been made that a prior art document could not be literally understood (e.g., because it was in a foreign language), it appears that such matters will likely hold less weight post-RTB since they relate more to an aspect of “being seized” of the prior art. However, questions may still arise where, for example, (a) a prior document is allegedly ambiguous, such that the PSA cannot understand it; or (b) the technical level of the prior art document is too high to be understood by the PSA.

As to relevance, arguments are likely to closely align with matters already routinely considered as part of an obviousness inquiry, such as the extent to which a prior art document provides a technically convincing pointer to the invention in its whole context. Where a document lies in an art remote from that of the problem solved by the invention, its relevance may also be open to question.^[4] However the relevance ‘criteria’ is also a worthwhile reminder that the PSA need not be assumed to follow the directions of the prior art, if there are reasons that they would not do so, for example where supporting data is questionable or where the common general knowledge in the art (CGK) leads indomitably in another direction, provided that individual prior art documents are not to be ‘played off against each other’ to determine which would be considered a preferable approach.^[5] Each prior art document must be considered separately, to determine the likely steps the PSA would take with that document in hand, without reference to whether the approach in a different prior art document would be preferred. In that regard, the relevance ascribed to a particular prior art document is to be considered only within the confines of its own contents and the CGK.

Closing comments

When facing inventive step rejections over a key prior art document, it is worth considering whether the PSA would have understood the document, the relevance of the prior art to the problem the invention was seeking to solve, and whether it would be considered a worthy starting point for further investigation or development. There remain grounds to argue that obviousness has not been established where the prior art in question is ambiguous, or the technical content is too high to be understood by the PSA, and where a document lies in an art remote from that of the problem solved by the invention. Considering these matters could very well tip the balance of probabilities in the applicant’s favour and go at least part way to overcoming an inventive step rejection.

References

[1] Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 IPR 257
[2] Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC [2023] FCA 1119
[3] Examiner’s Manual at 5.6.6.2 “Information against which inventive step is assessed”

[4] Proctor v Flo-Con, 4 IPR 187 at page 198
[5] AstraZeneca AB v Apotex Pty Ltd; AstraZeneca AB v Watson Pharma Pty Ltd; AstraZeneca AB v Ascent Pharma Pty Ltd [2015] HCA 30