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Emperor Sports Pty Ltd v Commission of Patents [2005] 996 FCA (25 July 2005)
Post-grant re-examination was introduced under s97(2) of the Australian Patents Act 1990 (Cth) in an effort to reduce the cost of, and in some cases avoid the need for, court proceedings by using the expertise of the Patent Office. Until recently, no precedent had been set with regard to the ex parte re-examining role of the Commissioner of Patents for assessing obviousness/inventive step.
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In September 2003, the Australian Football League (AFL) requested re-examination of Emperor Sports’ Patent No. 662655. The patent related to Velcro flags that could be removed from one player’s person by another player to simulate that a “tackle” had occurred during a game of football. The delegate for the Commissioner of Patents found that the invention lacked inventive step and revoked the patent.
In the recent Federal Court appeal of the delegate’s decision (Emperor Sports Pty Ltd v Commissioner of Patents (2005) 996 FCA 25 July 2005), Lindgren J noted that the “fundamental point of contention” in the re-examination conducted by the delegate was whether the hypothetical person skilled in the art (psa) could reasonably be expected to have “ascertained” the cited documents.
Initially, the delegate had concluded that a psa in this instance would, as a matter of course, have searched the patent literature and discovered the cited documents. Hence, the parties in question would have been able to “ascertain” the documents and these should form part of the prior art base. While Lindgren J agreed that this could have been the case, he believed that in the absence of evidence, the delegate was not at liberty to decide whether a hypothetical psa would have ascertained the existence of the cited documents. Therefore, he overturned the delegate’s decision.
As a consequence of Lindgren J’s decision, patent examiners may now find it more difficult to reject patent applications on the grounds that they lack inventive step. Practitioners will no doubt make use of this precedent in future attempts to lower the threshold for obtaining patent rights in Australia.
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