13 January 2025
Under Australian law, the concept of "inventive step" (or "obviousness") once required that, for a document to qualify as prior art, a skilled person must have been reasonably expected to: 1) locate (“ascertain”) it , 2) understand its contents, and 3) recognise its relevance. While this requirement was removed in 2013, it still applies to many older patents filed before the change.
The recent Full Federal Court decision in Sandoz AG v Bayer Intellectual Property GmbH [2024] FCAFC 135 clarified how the "ascertained" aspect of this rule should be interpreted. The case focused on whether a prior art document, a PCT publication, could reasonably have been identified by a skilled person. Although the trial judge ruled there wasn’t enough evidence to prove that a skilled person would have prioritised the particular PCT Publication document from a larger pool of search results, the Full Federal Court overturned this decision.
The Court stated that it is not necessary for evidence to be adduced that the skilled person would prefer, prioritise or select the information in question (here, the PCT publication) over all other information which they could be reasonably expected to have discovered or found out, including other information which was not adduced into evidence.
The Court concluded that a skilled person conducting a reasonable patent search would have likely found the published document. It dismissed the relevance of additional searches or documents, confirming that the PCT publication met the "ascertained" requirement and qualified as valid prior art for assessing the inventive step of the patent in question.
This decision is a positive development for those aiming to challenge patents, as it could ease the evidence-gathering process required to meet the threshold for re-examination and litigation. On the other hand, patent owners may face challenges in dismissing a prior art document for failing to meet the first of the three threshold requirements due to this ruling.
