Assessment of obviousness by the patent office
A recent Federal Court decision has considered the extent to which the Commissioner of Patents is able to consider issues of obviousness in ex-parte proceedings.
Emperor Sports Pty Ltd v. Commissioner of Patents (2005) FCA 996 (Lindgren J) concerned an appeal by Emperor (the patentee) against a decision of the Commissioner to revoke the patent following re-examination. The re-examination procedure was initiated at the request of a third party that had submitted certain prior art documents to the Commissioner against which the novelty and inventive step of the claims of the patent should be re-assessed.
It is to be noted that in re-examination proceedings, apart from requesting re-examination and providing documentary material for consideration during re-examination, the third party has no part in the proceedings which are essentially between the Patent Office and the patentee.
Examination by the Patent Office
The re-examination by the Patent Office found that while all claims except one had novelty, none of the claims had inventive step either in their original form or subject to various amendments which had been proposed. The issue was complicated by the refusal of the Patent Office to enter certain amendments which had been proposed and the appeal considered both the allowability of the proposed amendments and the decision to revoke the patent.
In the appeal, the court found the amendments to be allowable and also found that the claims incorporating those amendments did not lack inventive step.
The significance of this decision really lies in the way the court dealt with lack of inventive step. s7(2), (3) of the Patents Act require the assessment of inventive step to be, inter alia, on the basis of prior art information in documents that the skilled person could, before the relevant priority date, be reasonably expected to have ascertained, understood and regarded as relevant. Whereas the Commissioner in reaching the decision as to lack of inventive step had determined that the skilled person could reasonably have been expected to ascertain the cited prior art documents, that was firmly rejected by the court; at  his Honour said:
“ … in the absence of evidence, the Commissioner was not at liberty to decide whether a hypothetical person skilled in the art would have ascertained the existence of the Cited Documents. In the absence of evidence, the Commissioner was relegated to speculation. The Commissioner did not give effect to the opening words of s7(2) of the Act …”
His Honour also went on to observe at  that identification of a hypothetically skilled person might also call for evidence, although that particular issue did not arise in this case.
The consequences of his Honour’s considerations as to what the Commissioner is properly able to determine in the absence of such evidence are quite stark and are set out at  in which his Honour says:
“I appreciate that my conclusion may signify that post-grant re-examination may not readily lead to revocation on the ground of lack of inventive step. However:
the procedure has a greater role to play in relation to novelty;
it always remains open to a third party requesting re-examination to bring a revocation suit; and
the re-examination procedure may have the beneficial effect of leading to amendments (as happened here).”
The decision that has been handed down is within the context of ex-parte proceedings between, just, the Patent Office and the patentee. The situation that arises in pre-grant opposition proceedings is different because in those proceedings an opponent is a party and is able to submit appropriate evidence although, at least in the writer’s experience, the extent to which that evidence usually does address the specific issues considered in this case is questionable. As post-grant re-examination is comparatively rare, the impact of this decision within that narrow context is not particularly great. However, it is believed it is of significance when applied to the conduct of regular examination which takes place in the Patent Office before an application is accepted. The considerations applicable to the need for evidence to establish certain matters relevant to considerations of lack of inventive step in ex-parte re-examination proceedings post-grant must equally apply to pre-acceptance examination which is similarly an ex-parte proceeding. It will be interesting to see the extent, if any, to which the Patent Office will now change its approach when raising lack of inventive step objections as part of its routine examination procedure.