It's patently not obvious to an Aussie Rules coach

By Wayne Condon and Richard Hoad.

Key Points:
Patent examiners may start taking a more considered approach to the question of whether it is permissible to combine prior art documents with common general knowledge in assessing obviousness.

The Full Federal Court's judgment in Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26 reaffirms the proper approach to the assessment of obviousness in Australia, and the Court's reasoning may have a significant impact on the manner in which the Patents Office approaches the question of obviousness in the future.

The patent in issue related to a device for use in touch football – that is, a sport in which a "touch" on an opposing player takes the place of the tackle used in sports such as Australian Rules football and rugby league (and thereby reduces injury). The device the subject of the patent included material which is placed on the clothing of a player and which can be removed by the player's opponent to signify a "touch". The Australian Football League ("AFL") filed a request that the patent be re-examined after the patent had gone to grant. The AFL alleged that the patent was invalid on the grounds of want of novelty and obviousness, relying on eight US patents published between 1958 and 1987.

The most interesting aspect of the decision concerns the approach to the assessment of obviousness. Under the Patents Act 1952 (Cth), obviousness was assessed in light of the common general knowledge in Australia and without reference to any documents which had not become part of that body of knowledge. (Common general knowledge is the background knowledge and experience available to all working in the relevant field in Australia.) However, that approach was significantly altered under the Patents Act 1990 (Cth). Section 7(3) of the 1990 Act provides that common general knowledge in Australia may be combined with a document which a person skilled in the relevant art could "be reasonably expected to have ascertained, understood... [and] regarded as relevant".[1]

It was the test outlined in the 1990 Act which applied to the patent in issue in the Emperor Sports case. In response to the re-examination request, a delegate of the Commissioner of Patents decided that the person skilled in the art was someone with a good working knowledge of a ball-carrying sport, such as a coach, administrator, umpire or former player. He found that it would not be unreasonable for such people to update their knowledge through trade magazines and searches of patent literature.

The Full Federal Court criticised this approach. In a unanimous judgment, the Court decided that the notional skilled addressee could not reasonably be expected to have ascertained the US patents. Accordingly, those patents had to be ignored in determining whether the invention was obvious. The Court held that the word "ascertained" means "to find out or learn for a certainty by experiment, examination, or investigation; to make sure of, to get to know". The Court noted that:

"The reasonableness of expectations as to what the skilled person could do has to be assessed in the light of the characteristics of the relevant hypothetical skilled person and the particular problem faced, the overcoming of which is said to involve the inventive step... [W]e think it self-evident that it could not reasonably be expected that a Rugby League or Australian Rules coach, referee, umpire or administrator would conduct of a search of the United States Patent Office. Such an expectation would be fanciful rather than reasonable."

The decision highlights the importance of understanding the way in which the notional skilled addressee works. The Court noted that in high technology industries it can often be assumed without evidence that the skilled addressee will consult major professional or academic journals. The Court also noted that the Australian Patent Office Manual of Practice and Procedure states that examiners should generally proceed on the basis that a person skilled in the art will conduct a patent literature search, including of specifications in major countries. While the Court does not reject that statement as a general approach, it clearly cautioned that it is not one which is universally applicable. The decision may, therefore, result in patent examiners taking a more considered approach to the question of whether it is permissible to combine prior art documents with common general knowledge in assessing obviousness.

For further information, please contact Richard Hoad.