Novelty and inventive step are the two most crucial considerations when determining whether an invention is eligible for patent protection. They are also equally important when attempting to determine whether an existing patent was validly granted.
When a patent owner makes an allegation of infringement against another party, part of the defence strategy of the alleged infringer is likely to be an attempt to prove that the patent is not valid. An invalid patent is one that should not have been granted, usually because the invention was not novel or inventive when the patent was filed.
The novelty of an invention is relatively simple to determine, and in essence, comes down to whether an invention is new. In infringement actions, a patent may be invalid if the invention claimed in the patent was already known (and therefore, not new) when the patent was filed.
Inventive step, on the other hand, is more complex and involves determining whether the features of an invention, while different to what has been done before, would have been obvious to a person familiar with the technology.
There have been a number of changes in the law relating to inventive step in Australia over the last 20 years, meaning that the method of determining whether a patent is invalid due to a lack of inventive step depends on when the patent in question was filed.
At present, there are three regimes for determining inventive step (or a lack thereof) in Australian patents. These regimes are:
The 1990 Patents Act Standard
When the 1990 Patents Act was enacted on 30 April 1991, the inventive step was assessed based on whether an invention was obvious in light of the common general knowledge in Australia of a person familiar with the technology, whether alone or in combination with one earlier document.
However, simply because an earlier document existed didn’t mean it could be automatically used for assessing obviousness. Instead, it was necessary to demonstrate that a person familiar with the technology would have “ascertained, understood and regarded [the document] as relevant”.
For example, even if a highly relevant Japanese patent document for a plumbing fitting existed, it would be difficult to argue that an Australian plumber would have ascertained a Japanese patent document, let alone understood it.
Fortunately for potential infringers, very few Australian patents falling under this regime would remain in force.
The Updated 1990 Act Standard
For patents filed from 1 April 2002, it became possible when assessing inventive step to rely on a combination of two or more prior art documents to create an obviousness argument, provided that a person familiar with the technology in Australia would have been reasonably expected to combine the documents, and also as long as the documents would have been “ascertained, understood and regarded as relevant”.
While an improvement over the original 1990 Act standard, the updated standard still had the effect of potentially eliminating relevant documents from consideration.
Raising the Bar Act
Any patents on which examination was requested from 15 April 2013 onwards fall under the provisions of the Raising the Bar Act, under which Australia’s obviousness standard was brought into line with much of the rest of the world.
Under this regime, the “ascertained, understood and regarded as relevant” test was abolished, meaning that all documents published earlier than the patent in question can be considered when making an assessment of obviousness.
In addition, the common general knowledge of a person familiar with the technology is no longer limited to knowledge in Australia but is assessed on a global basis.
In theory, at least, invalidating an Australian patent has gotten easier over the past 20 years. Having said that, for an alleged infringer, the ability to invalidate a patent will be determined by the inventive step regime under which the patent falls. Ensuring that any attempt to invalidate a granted patent is conducted under the correct inventive step regime is equally important.
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