Australia's High Court grapples with the issue of obviousness again

For the second time in five years Australia’s ultimate appeal court, the Australian High Court, has given guidance on the test for determining "inventive step" in Australia[1]. In doing so it has embarked on a wide-ranging consideration of the concept of inventive step in Australian patent law and it has, once again, parted company from the UK jurisprudence on the same issue. However, the Court has applied a flexible, evidence-based test for determining obviousness which arguably echoes a similar, less rigid approach taken by the US Supreme Court in Teleflex[2]. This time the issue of inventive step arose in the context of a combination patent for a type of door lock (commonly referred to as a deadlock) which can be operated by key from both the outside and inside of the door.

The patent addressed a problem with prior art deadlocks viz. a deadlocked door could be opened from the outside, eg. with a key, but if the door was then closed, eg. accidentally, the door could not be opened from the inside without a key. This could create a dangerous situation.

The patent specification described the invention in the following terms:

"Such locks are typically arranged so as to be operated from the inside of the door and are not operable from the outside of the door. In particular, key operation of the latch from the outside of the door will not release the lock. That can lead to serious problems in circumstances where the door needs to be opened urgently from the inside ...

It is an object of the present invention to provide a key controlled latch which can be released from a locked condition by use of a key at the outside of the door or other member with which the latch is used."

Two principal claims of the patent were considered by the High Court in its deliberation on the issue of inventive step:

• Claim 1 was a broad claim and included six integers, the first five of which represented an acknowledged prior art "deadlock". The sixth integer embodied the concept of a safety release mechanism which was alleged to address the problem with prior art deadlocks; and
• Claim 13 added yet further limiting integers and was therefore a narrower claim than claim 1.

The High Court was only concerned with whether claim 13 was valid.

The trial judge had found that the sixth integer in claim 1 was present in certain storeroom and sliding door locks sold before the priority date but it was found that these locks were not part of the common general knowledge.

Does the admission of a problem with the art make the reverse automatically obvious?

At trial, the alleged infringer contended that the words of the specification set out above constituted an admission by the patentee which supported the assertion that claim one of the patent was obvious on its face. The trial judge rejected that contention but, on appeal, the Full Court of the Federal Court overturned the decision of the trial judge and inferred from the passage quoted a so-called "implicit corollary admission" as to common general knowledge and inventive step. The Full Court effectively held that it was obvious to conceive the reverse of a statement in a patent specification which noted the absence of a feature in a prior art product.

The High Court firmly rejected the Full Courts "implicit corollary admission" concept. The Court held that the true question whether the adding of the integer to a known previous combination of integers was inventive turned upon what a person skilled in the relevant art, possessed with the common general knowledge, would have regarded at the priority date as technically possible in terms of mechanics and also upon what was practical. This was said by the Court to be a particularly critical point where, as here, no witness had given evidence of a general idea of solving the known problem at the priority date.

The High Court's approach to obviousness

The High Court reiterated the position that it had stated in Alphapharm to the effect that the law relating to obviousness in Australia had departed from the UK approach, informed as the latter now is, by the application of the so-called "problem and solution" approach. The High Court observed that the "problem and solution" approach is one way of dealing with an ex post facto analysis of an invention but it considered this approach to be too confining as the only means of addressing the issue of obviousness in Australia. The High Court reiterated that only a small amount of ingenuity is sufficient to sustain a patent in Australia[3]. Ingenuity may, for example, lie in an idea for overcoming a practical difficulty in circumstances where a difficulty with a product consisting of a known set of integers is common general knowledge.

Admissions on the face of the specification

In relation to admissions on the face of the specification, the High Court observed that any such admission would always be made from the vantage point of knowing the solution to the problem addressed by the patent. If such admissions are used in evidence they would always need to be weighed with such other evidence, if it exists, from persons skilled in the relevant art of their perception of the problem at the priority date and before the exposure to any solution contained in the invention. The Court noted that admissions in a specification about common general knowledge are relevant but must be assessed as to their probative force as all other evidence must be.

Secondary evidence of obviousness

Courts in Australia have not often given great weight to secondary indicia of inventiveness. Consequently, evidence of long felt want, commercial success, the failure of others to find a solution to the problem at hand and copying by competitors has, historically in Australia, not been strongly pressed. The High Court has endorsed the relevance of secondary evidence which, it said, must be taken into account, together with all the other relevant evidence, in determining obviousness.

When can information not part of common general knowledge impact on inventiveness?

The 1990 Patents Act raised the threshold of inventiveness in Australia by permitting certain prior art information to be taken into account in addition to common general knowledge.

The High Court was concerned with whether the following type of information could be considered in addition to common general knowledge:

• information made publicly available in a single document or through the doing of a single act
• information made publicly available in two or more related documents or through doing two or more related acts if the relationship between the documents or the acts is such that a person skilled in the relevant art in Australia will treat them as a single source of information,

in both cases being information that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant to work in the relevant art in Australia.[4]

Doric argued on appeal that, even though they were not part of the common general knowledge, storeroom locks should be taken into account in determining the inventiveness of claim 13 because their sale was the type of information permitted to be taken into account in determining the obviousness of the invention identified in that claim.[5]

Firstly, the High Court found on this issue that, where a broad claim is being considered for obviousness, a correspondingly broader range of non common general knowledge public information can be taken into account and vice versa for a narrower framed claim. In this case claim 13 (with its additional integers over claim 1) was narrow and therefore it was not just any publicly available information which was relevant.

Secondly, the Court agreed with the Full Court's opinion that ascertained simply means discovered or found out - the storeroom locks didn’t have to be taken apart and inspected in order to be ascertained. The term understood logically meant only that the skilled addressee comprehended it or appreciated its meaning or import.

The High Court held that the words relevant to work in the relevant art meant relevant to solving a particular problem or meeting a long felt want and not any piece of public information in the relevant art. The Court distinguished the UK position set out in section 2(2) of the 1977 UK Patents Act which provides that the state of the art for the purposes of determining obviousness includes everything in the public domain.

The question of what a skilled person in the relevant art would regard as relevant when faced with the same problem as the patentee was, the Court said, to be determined on the evidence. None of the skilled addressee witnesses regarded storeroom locks as information they would have considered relevant to resolving the locked in problem posed by prior art deadlocks. The Court therefore held that storeroom locks did not qualify as section 7(3) information for determining the obviousness of claim 13.

Conclusions

The result of this decision, internationally, is to emphasise the lower threshold for inventive step in Australia than in the UK and (arguably) the US. This may well result in patents being held valid in Australia that are not enforceable in other jurisdictions. The case is a ringing endorsement for the paramountcy of the evidence of the skilled addressee and a move away from any rigid or proscriptive approach to determining the obviousness of a patented invention. Admissions on the face of the specification will have relatively narrow operation in Australia and there will have to be some objective basis established for suggesting that a skilled addressee would have taken into account public information not amounting to common general knowledge in attempting to solve a problem in the prior art.

We now anxiously await the application of these principles at trial and initial appellate level in Australia.

[2] KSR International Co v Teleflex Inc 550 US (2007).

[3] By implication suggesting that a higher level of inventiveness is now required in the UK than Australia.

[4] This being the statutory test for inventive step which applied prior to the 2001 amendments to the 1990 Patents Act. A somewhat more expansive test now applies.

[5] Pursuant to section 7(3) of the Patents Act 1990.