Traditionally, it has been relatively easy in Australia, compared with the US or Europe, to meet the threshold level of inventiveness needed for an inventive step. However, a recent Federal Court decision has shown that the Patent Office is prepared to put on expert evidence in order to defend an adverse examination decision on inventive step. With the recent Raising the Bar Bill introducing tougher requirements for inventive step, patent applicants look set to face a more rigorous assessment of inventive step by the Australian Patent Office. The Patent Office has demonstrated that it is prepared to scrutinise the quality and relevance of any evidence submitted by an applicant to support an assertion of inventive step.
Toughening of inventive step in Australia
For patent applications examined under Australia’s old law (ie applications for which examination was requested before 15 April 2013), inventive step has been a relatively low hurdle to pass.
The recent Raising the Bar Bill in Australia has seen a toughening of inventive step requirements by expanding the definition of common general knowledge from a national to a global scope, and by removing the express requirement for a person skilled in the art to have been expected to have ascertained a document in order for it to be citable prior art.
There is some question as to how effectively the new laws will be at toughening inventive step in Australia because the legislative changes do not raise the inventive step threshold itself – only the information that may be considered. However, the intent of these legislative changes is to raise the standard set for inventive step to a level more consistent with other major jurisdictions. Therefore, the Patent Office could potentially take the Raising the Bar Bill as a general charge to be firmer in their assessment of inventive step, even within the framework of the same threshold test.
The Patent Office’s treatment of inventive step
Unlike the US or Europe, Australia has a deadline for acceptance (allowance) of an application. As the deadline approaches, there is pressure on both the Patent Office and the applicant to resolve the objections. Australia’s relatively lax requirements on inventive step has resulted in it being uncommon for a patent application to fall, during examination, due to lack an inventive step, especially under the pressure of a looming acceptance deadline. Even if the examiner maintains objection, there is also an option to file a continuation-style divisional application in order to further pursue the argument at examination level. Therefore, it has been rare for an applicant to face the Patent Office in the Federal Court to appeal an adverse examination decision on inventive step.
However, such a case was recently heard in Cronk v Commissioner of Patents1 (‘Cronk’). During examination, the applicant had submitted weak evidence to support their assertion of inventive step. The new, tougher inventive step laws did not apply to this patent application because this case was examined under Australia’s old law. Despite this, the Patent Office found the applicant’s evidence unconvincing and rejected the applicant’s position, instead favouring a view that the invention prima facie lacked an inventive step.
In the appeal to the Federal Court, the Court was critical of the applicant’s evidence, finding that that none of it was from a person proven to be skilled in the art or was indicative of what a person skilled in the art would have done if faced with the same problem as the inventor.
Interestingly, the Patent Office strongly defended its position by submitting evidence from an expert of its own. In contrast with the applicant, the Patent Office submitted evidence that its expert had strong credentials in the relevant art. Ultimately, the Patent Office prevailed, at least partly due to the better quality of its evidence.
Facing the Patent Office on inventive step
Under the tougher inventive step requirements brought in by Raising the Bar, we may more commonly see Federal Court cases that are appealing an adverse Patent Office examination decision on inventive step. The assertive approach of the Patent Office in Cronk suggests that the Patent Office is ready to approach inventive step with rigour, as the new, tougher requirements on inventive step come into effect.
The new law also reduces the deadline for acceptance from 21 months (from date of the first examination report) to only 12 months, so some patent applicants will need to be more proactive in addressing novelty and inventive step objections in Australia. In cases where applicants are having difficulty overcoming an inventive step objection, it may be prudent to file strong expert evidence in support of their application. Once a case gets to Court, the Patent Office is prepared to seriously defend its position with expert evidence of its own.
1 Cronk v Commissioner of Patents  FCA 37