Australian Full Court reinforces test for obviousness prior art

Copyright Friday, March 10, 2006 Duncan Bucknell Company

On 10 March 2006, the Australian Full Federal Court handed down its decision in Commissioner of Patents v Emperor Sports.

Take home

In dismissing the appeal, the Full Court reinforced the logical, stepwise approach to assessing the availability of prior art in an obviousness attack based on s 7(3). In essence, the approach to take is as follows:

1 — identify the relevant art of the patent specification;
2 — identify the person skilled in the relevant art;
3 — consider whether this notional person could reasonably have:

(a) ascertained (ie, found) the relevant prior art document;

(b) understood the content of the document; and

(c) regarded the document as relevant to solving the problem in question.

If the answer to all three questions is yes, then the document is available to use in an obviousness attack (along with the common general knowledge of such a person).

In Emperor Sports, the person skilled in the relevant art was held to be “a Rugby League or Australian Rules coach, referee/umpire or administrator” and the prior art documents in question were US Patents. The Full Court held that such a person could not reasonably be expected to ascertain such documents.

Strategy

Interestingly, the case was kicked off by a post-grant third party re-examination request filed by the Australian Football League (AFL) (see s 97(2) of the Act). The claims were narrowed during re-examination several times with the result that they are limited to use of the (touch football) product for Rugby League or Australian Rules Football. This will presumably be cold comfort for the AFL.

Consequently, unless there is a settlement, we should not be surprised to see the patent back before the courts in either a revocation or infringement suit, or both.