The Australian Patent Office has, by its own initiative, issued a new examination directive which attempts to adopt a more European approach to obviousness. The amended test for obviousness, to apply from 1 August at the Office is "Would the person skilled in the art (in all the circumstances) directly be led as a matter of course to try the claimed invention in the expectation that it might well produce a solution to the problem?".
The Office has no legislative basis for making the amendment. Given the present lack of legislative concern for the patent system, the amended practice appears to represent a form of Office refusing to accept settled law on obviousness in Australia in light of a desire to adopt a European approach to obviousness. Traditionally, our laws of obviousness have relied on a notion of common general knowledge to limit the material available on an obviousness attack. It is submitted the European approach of allowing all material in the libraries of the world to be considered on obviousness is completely artificial and effectively adopting a hindsight analysis of the obviousness issues. Our courts have consistently rejected this form of 'carte blanche' approach through the enforcement of at least some notion of the prior art material being reasonably in the domain of the person skilled in the art.
The judicial activism of the Office is misplaced. It will now require an unfortunate patentee to incur the expense of appealing to the courts to correct the Office's behaviour. The correct avenue for legislative change is the legislature.
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