Getting the balance right

In March 2009 IP Australia issued a consultation paper seeking comment on a number of proposed changes to the Patents Act 1990 directed at improving the patentability standards of Australian patents. The proposals address a perception that the threshold standards for the grant of a patent in Australia are lower than those of Australia’s major trading partners. The proposed changes are said to be aimed at bringing Australian patent standards into line with those of jurisdictions such as the United States, Japan and Europe - jurisdictions which have a greater degree of consistency in granting or refusing patent protection in comparison with Australia.

The proposed amendments target, among others, the following areas: 

• full description and fair basis; 
• the date on which new matter can be inserted into a specification; 
• the level of disclosure required to support a priority claim; 
• the inventive step threshold; and 
• improving certainty regarding the requirements considered during examination, re-examination and opposition.

In Australia, there are three key areas where differences with major trading partners exist in relation to the assessment of inventive step. It is considered important that Australia should be in alignment with the approach used in these jurisdictions and, in this regard, the paper discusses the issues of common general knowledge, prior art and the threshold level for inventive step.

At present in Australia, the common general knowledge is assessed only in light of what is known in Australia in the technology context of the invention to a hypothetical person skilled in the art. This approach differs from that utilised by both the Patent Cooperation Treaty and other trading partners where, irrespective of the context of the invention, the common general knowledge is considered to be global. The paper suggests that Australian research has moved on from being locally driven to being globally driven; consequently the associated information and innovation environments should reflect that progression. To this end, it is proposed that Section 7(2) of the Patents Act be amended to remove the limitation that the common general knowledge is confined to Australia.

Turning to the prior art against which inventive step is assessed, either alone or in combination with the general knowledge, the relevant prior art base comprises information contained in a document that is publicly available and also information that is made publicly available through the carrying out of an act, whether in Australia or abroad. However, whether the prior art information comprised in the prior art base can actually be considered requires meeting a further threshold test. Specifically, the prior art information must be such that the person skilled in the art could be reasonably expected to have ascertained, understood and regarded the information as relevant (Section 7(3)). Furthermore, if reliance is to be had on more than one piece of prior art information, one also needs to establish that the person skilled in the art would be reasonably expected to combine the information.

To establish these requirements introduces an evidentiary burden on a party seeking to defend or enforce a patent.

Accordingly, this burden has the potential to introduce significant costs during the litigation of patent disputes. In general, Australia's approach differs from that of its major trading partners, where the person skilled in the art's “propensity to search” for prior art information is a rebuttable presumption in establishing lack of inventive step.

It has been proposed that, while the prior art base for determining inventive step is to remain as it is, Section 7(3) of the act be amended to:

“remove the requirement that prior art information for the purposes of inventive step must be such that the person skilled in the art could be reasonably expected to have been ascertained, while retaining the requirements that the prior art be understood and regarded as relevant.”

Finally, turning to the threshold test for inventive step, it is recognised that standards vary across jurisdictions. In Australia, following a decision by the High Court in Lockwood v Doric ([2007] HCA 21), it was affirmed that one test for lack of inventive step is whether or not the person skilled in the art would be led directly as a matter of course to try a particular approach with a reasonable expectation of success.

This differs to Australia’s trading partners, such as the European approach of whether the invention would have been obvious to try with a reasonable expectation of success.

While this latter approach appears to set a higher threshold for non-obviousness, it recognises that it is not uncommon for a person skilled in the art to undertake routine experimentation to solve a problem. However, countering this possible higher threshold is the fact that, in the analysis of what constitutes the inventive step, the common general knowledge base available in the assessment is worldwide and the person skilled in the art is not required to have ascertained a specific citation that would suggest a particular approach as is required in Australia.

Accordingly, it is proposed that the inventive step test be revised to a test where the claimed invention is obvious if it was “obvious for the skilled person to try a suggested approach, alternative or method with a reasonable expectation of success”.

In considering how to approach these matters there is a balance to be struck between the scope of the monopoly to be granted and the provision of access to innovation and development of technologies. In considering these issues, it has been pointed out that to do nothing to raise the threshold(s) will result in Australia being even “further out-of-step” with the international environment.

IP Australia is currently considering submissions made in respect of the proposals and will subsequently make recommendations to the government on the path forward.