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.