Australia’s Federal Court Addresses Inventiveness

The Full Federal Court of Australia has made a decision which may change the way the Australian Patent Commissioner considers the test for inventiveness when dealing with patent examinations.

 The case goes back to 2003 when the Australian Football League requested the Patent Office to re-examine the Emperor Sport’s patent for Velcro strips. The patent essentially allowed a velco strip to be worn/attached to one sporting player and removed by another, thus indicating a successful tackle in touch football. The Patents Commissioner held that the strips failed to meet the requirements for ‘inventive step’ and thus the patent was revoked. Emperor Sports responded with an appeal.

 However, in July 2005, Justice Lindgren of the Federal Court, stressed that at re-examination stage, when assessing inventive step, the Patent Commissioner was required to ascertain evidence to suggest that certain prior art specifications could be “ascertained, understood and regarded as relevant” by a person skilled in the art.

 The Patent Commissioner subsequently appealed, however the appeal was dismissed on 10 March 2006. In short the Federal judges held that it could not be assumed that a person skilled in the art could be expected to carry out a search against patent literature.

 Rob Wulff (Griffith Hack) who represented Emperor Sports commented that the ruling: Â

“makes it clear that, in a lack of inventive step objection, the Commissioner and judicial authorities must first establish that a skilled person could have ‘ascertained’ a cited document. It is not enough merely to assert that a skilled person had the possibility to conduct patentsearches.”

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