Assessment of inventive step in technology areas not practiced in Australia

Assessment of inventive step in technology areas not practiced in Australia

Ajinomoto Co. Inc. v NutraSweet Australia Pty Ltd [2008] FCAFC 34 (17 March 2008)
The Full Federal Court has handed down a decision which may have the practical effect of making it more difficult to invalidate an Australian patent filed on or after 30 April 1991 and before 1 April 2002, on the ground of lack of inventive step or obviousness. Although the Court's comments were ultimately obiter, the decision may serve to restrict the types of information available for an obviousness attack to information the skilled person could reasonably be expected to have ascertained, understood and regarded as relevant to actual work conducted in the field in Australia. Where the invention is in a field in which no actual work is done in Australia, any information that is not common general knowledge may not be available for an attack based on lack of inventive step.

Facts of the case

Ajinomoto was the patentee of AU 727199 ('the Ajinomoto patent') which was filed 1 October 1997 under the Act prior to the commencement of the 2001 Patents Amendment Act. The claims of the patent were directed to a compositional blend of the high intensity sweetener Neotame with either or both aspartame and AceK. All of the sweeteners were known as at the priority date.

The primary judge found that the claims lacked an inventive step in light of the common general knowledge of the skilled person combined with a single prior art reference, "the Nofre Tinti patent", which highlighted the sweetening potency of Neotame.

In the present case, which is an appeal from the primary judgement, Ajinomoto argued, inter alia, that the primary judge erred in considering the Nofre Tinti patent as being part of the prior art information available for an obviousness attack.

Legislative background

According to Section 7(2) of the Australian Patents Act 1990 ("the Act"), an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim, whether that knowledge is considered separately or together with information specified in Section 7(3).

The Act essentially defines the "patent area" as Australia.

Section 7(3) sets out the types of information that may be combined with the common general knowledge in order to assess the inventive step of a claimed invention.

For Australian Patents filed from 30 April 1991 and prior to 1 April 2002 (as was 'the Ajinomoto patent'), the prior art information available for combination with the common general knowledge must satisfy the test of being information a skilled person could, before the priority date, be reasonably expected to have ascertained, understood and regarded as relevant "to work in the relevant art in the patent area."

The 2001 Patents Amendment Act amended s7(3) to remove the expression "to work in the relevant art in the patent area", and to provide for the combination of two or more pieces of prior art information.

Interestingly, some 18 years after the commencement of the Act, the present decision of the Full Federal Court represents the first judicial consideration of what restrictions, if any, are imposed by the presence of this expression on Section 7(3) prior to the amendment by the 2001 Patents Amendment Act.

The decision

The Full Federal Court acknowledged that the primary judge failed to appreciate that the patent fell within the framework of the Act prior to the commencement of the 2001 Patents Amendment Act, and accordingly, had overlooked the importance of the expression "to work in the relevant art in the patent area" in respect of the Nofre Tinti patent.

Ajinomoto's position was that as no actual work in the field was conducted in Australia (as at the priority date) the Nofre Tinti patent should not have been available under Section 7(3) for combination with the common general knowledge.

NutraSweet argued unsuccessfully that as Section 7(3) is directed to the activities of the hypothetical skilled person then the expression should be read as referring to the hypothetical work such a person could have done.

In reviewing all other possible legislative basis for the expression, the Court could not find support for giving the expression anything other than its ordinary and natural meaning and proceeded to investigate the filed evidence to ascertain what actual work was done in the field in Australia before the relevant priority date.

The Court recognised that the invention lay not with the synthesis or discovery of a new sweetener compound but in the blending of known sweeteners and that there was ample evidence to show that as at the priority date the physical blending of synthetic sweeteners had been done on a routine basis in Australia. Accordingly, the Nofre Tinti patent was regarded as admissible Section 7(3) prior art and the claims were found to lack an inventive step.

Interestingly, the Court intimated that a different outcome could have resulted if the invention related to the production of new intense sweetening compounds where it appeared that no such work was undertaken in Australia as at the priority date.

Commentary

If relying on a prior art document for an obviousness attack (in relation to claims of an application filed on or after 30 April 1991 and prior to 1 April 2002) it appears that it will now be important to demonstrate that there was work in the relevant field in Australia before the priority date. Accordingly, this decision is likely to benefit holders of Australian Patents in relation to technological fields where there is no actual or practical work conducted in Australia.