Australia's Highest Court just made it harder to invalidate patents

Take home

today (23 May 2007), a unanimous Australian High Court handed down the
long-awaited decision in the Lockwood v Doric patent

For those who
aren’t patent lawyers – the decision means that it is now harder to
invalidate patents in Australia as an often relied upon attack (the ‘Threshold
Test’) has been all-but removed, and the requirements for proving
obviousness are now more difficult.

Having said
that, the decision has brought Australia into better alignment with many
other jurisdictions, by putting admissions in a patent specification into
proper context and by (all but) removing the ‘Threshold Test’ of

For those
in patent law – in relation to obviousness, the court stated (some would say
restated) that:

obviousness is a question of fact;

‘obvious’ means ‘very plain’

a ‘scintilla of invention’ remains sufficient in Australian
law to support the non-obviousness of a patent;

in contrast to the situation in Europe,
the ‘problem-solution’ approach may be useful but is not
determinative of obviousness under Australian law;

admissions made in a specification about prior art and common general
knowledge are not determinative of their contents, but must be weighed
against other evidence presented to the court (such as that from technical

the role of secondary evidence (such as commercial success, satisfying
a long-felt want or need, the failure of others to find a solution to the
problem at hand and copying by others) should not be discounted in
obviousness cases (secondary considerations have been used to great effect in
the USA).

In addition, the Court held that the infamously confusing
Australian ‘Threshold Test’ of inventiveness does not exist. In the words of the Court: “The
decision in Microcell has not always been
properly understood; it does not involve a separate ground of invalidity or a
discrete “threshold” test.”



decision reinforces the differences between Australian law and that of Europe in which the ‘problem-solution’
approach prevails. This is not to say
that the problem-solution approach shouldn’t be used in Australia,
just that it isn’t determinative.

On the
other hand, in the USA,
secondary considerations are oft-cited in obviousness arguments and litigants
can expect their prominence to increase in Australia in light of this

made in a patent specification have at last been put in their proper context
by this decision. Based on the Wrigley and BMS decisions, there has been a widespread
view that the content of such admissions was unchallengeable.

Threshold Test

nail in the coffin of this infamously confusing test can only be a good
thing. The test exists no where else
in the world (as far as I am aware), and came about by misinterpretation of obiter comments in earlier decisions
in different contexts. While the High
Court has clearly stated here that there is no such test, there is High Court
authority that could be used to argue against this position, and the comments
in this decision were not part of the ratio.

Section 7(3)
prior art

Under Australian
law, obviousness is tested against (a) the common general knowledge of the
person skilled in the art either alone or combined with (b) prior art information
that could reasonably have been ascertained, understood and regarded as
relevant by the person skilled in the art.
The High Court made some confirmatory observations about the operation
of this section which are also well worth a read. Most interesting of these is that ‘regarded
as relevant’ for the purposes of this test may vary with each claim in
a patent.


Background to the patent and the invention

The priority date of the Patent is 14 February 1996. The
application for the Patent was filed on 11 February 1997 and Lockwood was
entered on the Register as the proprietor on 2 November 2000. The Patent
claims a “key controlled latch”:

“This invention relates to latches of the kind which
are controlled by a key operable lock and which are intended for use on doors
and other movable members adapted to close an access opening …

Latch assemblies for doors commonly include a turn knob or
handle which is generally located at the inside of the door and which is
rotated to withdraw the latch bolt into its casing. In order to improve the
security of such assemblies, manufacturers have included a key operated lock
which is operative to releasably hold the turn knob
or handle against rotation.”

The specification further explains:

“Such locks are typically arranged so as to be
operated from the inside of the door and are not operable from the outside of
the door. In particular, key operation of the latch from the outside of the
door will not release the lock. That can lead to serious problems in circumstances
where the door needs to be opened urgently from the inside, particularly if
the lock key has been misplaced or is not conveniently accessible.

It is an object of the present invention to provide a key
controlled latch which can be released from a locked condition by use of a
key at the outside of the door or other member with which the latch is

The litigation

The proceedings were commenced on 12
October 2000. Doric, sought relief under s 128 of the Patents Act 1990 (Cth) (“the Act”) on the grounds that Lockwood
had unjustifiably threatened Doric and its two distributors with infringement
proceedings. Lockwood cross-claimed against Doric for infringement of the
Patent; in a second cross-claim Doric sought revocation of the Patent on the
basis that it was invalid.

For a copy
of the decision, click

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