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ARTICLE · 23 JANUARY 2007

The Importance Of "Ascertained" In Obviousness

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The Full Federal Court (FFC) has dismissed an appeal by the Australian Patent Office (APO) against a Federal Court decision that US patents revealed in a novelty search did not satisfy the "ascertain" requirement for inventive step, and so could not be used to invalidate an Australian patent for obviousness.

AustraliaIntellectual Property
Russell Davies
Russell Davies
Andrew Lowe
Andrew Lowe
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Commissioner of Patents -v- Emperor Sports Pty Ltd

(2006) 225 ALR 407; (2006) 67 IPR 488; [2006] FCAFC 26

Summary

The Full Federal Court (FFC) has dismissed an appeal by the Australian Patent Office (APO) against a Federal Court decision that US patents revealed in a novelty search did not satisfy the "ascertain" requirement for inventive step, and so could not be used to invalidate an Australian patent for obviousness. This case highlights the importance of the person skilled in the relevant art (PSA) in determining obviousness or lack of inventive step in Australian patent law.

Background to the Judgement

Under the Australian Patents Act, a prior publication must be a document which a PSA "… could be reasonably expected to have ascertained, understood and regarded as relevant..." before a prior publication can be used to assess the obviousness of a claimed invention.

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