The intention of the legislature is to raise the obviousness standard of Australian patents to be more consistent with the standards of other major jurisdictions. This is to be realised through legislative changes that will effectively expand the prior art base and common general knowledge relevant to testing obviousness.
Under the current law, obviousness prior art is limited to documents or acts that the skilled person could be reasonably expected to have ascertained, understood and regarded as relevant. Where the evidence shows that prior art does not meet each of these criteria, the art cannot be used for testing obviousness.
The proposed legislation expands obviousness prior art base to remove the explicit language of ‘ascertain’, ‘understand’ and ‘regard as relevant’ from the statute. According to the Explanatory Memorandum, however, this is not intended to result in all prior art information being axiomatically available for obviousness. While a skilled person will be deemed to be aware of all publicly available prior art information, such information may still be excluded from obviousness considerations if it can be shown that the skilled person could not have appreciated its relevance.
Under the current law, obviousness is assessed in light of the common general knowledge (a subset of public knowledge) of the skilled person as it existed in Australia at the priority date.
The proposed legislation expands the common general knowledge to include knowledge of the skilled worker as it existed anywhere in the world at the priority date.
The prior art base in Australia includes information made publicly available through doing an act (prior use) or publication anywhere in the world. During examination, however, the Commissioner has been statutorily barred from taking account of prior use information when assessing obviousness (and novelty).
Under the proposed amendments this bar is to be removed, and the Commissioner will be able to consider all prior art information during examination.
Once the amendments come in to force, it is expected that the amendments relating to obviousness will apply to complete patents and applications:
With the proposed changes to the prior art base and common general knowledge, it seems reasonable to expect that Australian applicants will find obviousness more challenging. In many cases, however, the Australian Patent Office’s practice of relying on the prosecution of corresponding US/European patent applications may result in there being limited real change in this regard.
Further, the requirement to assess the claimed invention in light of the common general knowledge is to remain. Even with the expanded prior art base, therefore, obviousness is unlikely to be found where it can be shown that the common general knowledge teaches away from the teaching of the prior art.
For further information on these developments, the Exposure Draft of the Explanatory Memorandum for the Bill can be found on the IP Australia website.1
This article was written by Stuart Irvine, Senior Associate, Roger Henning, Special Counsel and Tom Gumley, Partner, Freehills Patent Attorneys.