Raising the bar on inventive step

Australia currently measures inventive step with reference to an imaginary person skilled in the art in Australia. Such a person has been taken to require specific common general knowledge of a particular art in Australia. Although developments in case law have sought to extend the test to cover common general knowledge outside Australia where an art is “global”, the statutory test is about to change.

The government has recognised that measuring inventive step with reference only to the Australian context is too limiting. Such a test does not recognise the modern reality that technology spreads globally, sometimes at a very rapid rate. Accordingly, the restriction that common general knowledge be in Australia will be lifted. Instead, a global common general knowledge will be referred to. This will bring Australian inventive step law into line with the law in key trading partners such as the United States, Europe and Japan.

For most patent filers in Australia, little will change. It is not even clear that the examination process will change that much, since search and examination information from other jurisdictions, particularly the United States and Europe, is persuasive in Australia. Such search and examination is usually based on a more extensive presumed “common general knowledge” than under current national law.

However, there is potential for the opposition process to change and perhaps be simplified in some ways. To date, establishing lack of inventive step in Australia has typically required evidence from an expert familiar with the art in Australia. This will change. Once the legislation is enacted, such evidence will be admissible and accorded weight regardless of whether it comes from an expert familiar with the art in Australia.

In addition, patent documents will become a more persuasive proxy for proof of common general knowledge. To date, patents have been viewed sceptically as evidence of common general knowledge in Australia. This is likely to change as the government and IP Australia see patents as a reasonable basis for inferring common general knowledge. This is already the case in many jurisdictions where patents are deemed part of the state of the art for inventive step purposes.