Proving Lack of Inventive Step in light of the Common General Knowledge

Dr. Victoria Longshaw and Dr. Jim Onishi

In Garford Pty Ltd v DYWIDAG-Systems International Pty Ltd [2014] APO 37, an Opposition Decision recently handed down by the Australian Patent Office, the Hearing Officer provided some useful comments on proving lack of an inventive step in light of the Common General Knowledge (“CGK”) in Australia.

The Case

The case involved an Opposition to Australian Patent Application No. 2009329824 (“the Application”), in the name of DYWIDAG-Systems International Pty Ltd (“the Applicant”), which claimed an invention relating to an apparatus and method for manufacturing a cable bolt. Cable bolts are typically used to secure the roof or walls of an underground mine, tunnel or other ground excavation.

Garford Pty Ltd (“the Opponent”) opposed the Application on the grounds of lack of novelty, lack of inventive step, secret use, and lack of clarity. However, at the Hearing, the Opponent indicated that its focus was on the grounds of lack of inventive step, lack of novelty for claims 18 and 19 only, and lack of clarity.

It was held that Claims 18 to 23 lacked fair basis, on a point which was initially identified by the Hearing Officer. The Opposition was otherwise unsuccessful. The Applicant has been given 60 days to file amendments, and no costs were awarded since the prevailing ground was identified by the Hearing Officer.

Lack of Inventive Step vs Common General Knowledge (“CGK”)

Of interest were the comments provided by the Hearing Officer relating to the unsuccessful lack of inventive step arguments submitted by the Opponent.

The Hearing Officer considered the principal problem with the Opponent’s submissions on this ground was that the evidence provided did not establish “enough” common general knowledge to discharge the Opponent’s onus.

The Opponent argued that accumulators and their use in controlling tension in processing of continuous strips or lengths of material was CGK at the priority date. However, the question remained whether every other element specified in the claimed method of manufacturing a cable bolt by using the apparatus was also part of the CGK. The Opponent argued that they were, and directed the Hearing Officer’s attention to the “Background to the Invention” section of the Specification of the Application in suit, in which prior art apparatus had been described by the Applicant.

However, the Hearing Officer refused to regard the information contained in the “Background to the Invention” section as a statement of CGK and stated that:

“If an invention lacks an inventive step in light of the common general knowledge, it does not follow that the invention is common general knowledge…”

It was further considered that even if every individual element of the claimed invention was well-known, an Opponent will still need to provide evidence that the skilled person would have selected those features and combined them in the claimed way to obtain the claimed invention (as a matter of routine).

The evidence submitted by the Opponent was considered to be tainted by hindsight as the Experts giving evidence started their analysis with the “Background to the Invention” provided in the Specification and being told that the apparatus described in the Opponent’s Patent (the prior art in consideration) was inefficient and redesign of that device was the problem to be solved.

The fact that the Experts were given the prior art document by the Opponent and informed of the deficiencies of the prior art apparatus as well as the problem to be solved made this case difficult to the Opponent. This was because it could not be demonstrated that the prior art document would be ascertained, understood and regarded as relevant, as required under Inventive Step considerations, and furthermore, it was questionable whether the prior art document would be relevant when in fact the prior art apparatus had the same problem that the opposed Application sought to solve.

The Claims of the Application were thus considered to be inventive in light of both the common general knowledge and the prior art submitted in support of the Opponent’s arguments.

Take Home Message

This case is a useful reminder of the nature of the evidence that must be submitted in Australian Patent Opposition Proceedings to prove the lack of an inventive step in light of the CGK. Not only must every feature of an apparatus, or step in a method, be well known in Australia as at the priority date, but the combination of those features by a skilled person must have been obvious.

Furthermore, it is also necessary to bear the strict Australian evidentiary requirements in mind when submitting expert evidence in patent matters in order to avoid any use of hindsight.

Documents incorporated by reference do not provide basis to support a priority claim in Australia

Dr. Victoria Longshaw and Dr. Nigel Parker

A recent Patent Opposition Decision handed down by the Australian Patent Office clarifies the requirements of incorporating references into priority documents in lieu of disclosure.

The Case

 

In Christopher John Carter v Cristal Metals Inc. [2014], Cristal Metals Inc. (“the Applicant”) had obtained acceptance of Australian Patent Application No. 2006302273 (“the Application”) for an invention relating to a titanium metal powder having submicron titanium boride substantially uniformly dispersed within it. The claimed invention used the Armstrong process, although this was not specifically described in the Specification.

 

Claim 1 of the Application was directed to the titanium metal powder of the invention, and was defined in terms of the process steps used to produce it. However, in lieu of explicit description of the Armstrong process, the Specification incorporated by reference three United Stated patents that disclosed the Armstrong process.

 

Christopher John Carter (“the Opponent”) opposed the Application in the basis that the Claims were not fairly based. Other Grounds of Opposition included lack of novelty, lack of an inventive step, lack of clarity, and not a manner of manufacture.

 

This matter was considered in terms of the applicable law in force before 15 April 2013. That is, the grounds of opposition were considered according to the provisions of the Patents Act 1990 before amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

 

Lack of entitlement to priority date claimed

Of interest in this case was the challenge by the Opponent to the Applicant’s claim of a priority date of 6 October 2005, which was the date of filing of the priority document, United States Patent Application No. 60/724,166. It was argued that there was no real and reasonably clear disclosure in the priority document of the process steps of the Claims of the Application.

 

Under Australian Patent Law applicable to the Application, a Claim of a Convention Application, if fairly based on matter disclosed in a related “basic application,” would take the priority date that the Claim would have had if it had been included in the basic application. Furthermore, under the previous legislative regime, the Claims of a Specification had to be fairly based on the matter described in the Specification. This requirement has been interpreted by Australian Courts as requiring that there be a real and reasonably clear disclosure of what is Claimed.

 

In this case, the Hearing Officer considered that the Armstrong process was not described in the priority document. It was held that, for priority purposes, matter relating to the process to produce the alleged invention should be present in the priority document itself. The reliance on the citation of three United States Patents by way of disclosure of the Armstrong process was not considered to be a disclosure as required by Section 40(3) of the Patents Act 1990.

 The Claims of the Application were therefore considered to lack entitlement to their claimed priority date. The Hearing Officer also regarded several Claims of the Application to lack novelty and an inventive step.

Take Home Message

 It is worth bearing in mind that the approach of incorporating the disclosure of external documents by reference into a Provisional Patent Application may not always be considered to meet the fair basis patentability requirement of a related Australian Application that was filed under the previous Patent Act. This is particularly the case where Provisional Patent Applications have been filed in jurisdictions other than Australia.

 

Furthermore, recent legislative changes to the Patents Act 1990 by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, now require a Provisional Specification to disclose the invention in a manner which is “clear enough and complete enough for the invention to be performed by a person skilled in the relevant art,” in order for a Claim to appropriately claim priority from that Provisional Patent Application.

 

Applicants intending to file Convention and PCT National Phase Applications in Australia would be well advised to include a direct description of any relevant material in the Specification of a Provisional Patent Application filed in another country as basis for subsequent Claims, rather than rely on the incorporation of documents by reference.

Clarity: the Achilles’ heel of Patent Applicants in Australian Opposition Proceedings

Dr. Victoria Longshaw and Dr. Elizabeth Houlihan

The Australian Patent Office recently handed down a Decision in Patent Opposition Proceedings which illustrates the difficulty faced by Applicants in countering opposition grounds based on lack of clarity.

In Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2014], Innovia Security Pty Ltd (“the Opponent”) successfully opposed Australian Patent Application No. 2005274464 (“the Application”) on the grounds that Claim 1, and the Claims dependent thereon, were unclear. The Hearing Officer concluded that these Claims were so unclear that no assessment of other grounds of opposition could be made on those Claims. Claims 4 to 24 were considered to be valid.

This Decision is relevant to Patent Applicants who may need to defend Patent Claims from lack of clarity attacks in Australia. It is also relevant to Patent Applicants filing Patent Applications in Australia which do not include technical definitions in the Specification.

The invention claimed

The Application involved technology used in providing authentication marks for value papers having a transparent substrate, such as banknotes which include transparent windows with security features and elements useful for verifying the authenticity of the banknote.

Giesecke & Devrient GmbH (“the Applicant”) had claimed a security element for securing security papers, value documents and the like, having a transparent or translucent substrate which is provided with an authenticating mark including one or more layers composed of liquid crystal material present in the form of patterns, characters or codes.

The authenticating mark, in transmitted light, was described as imparting a first optical impression and displaying patterns, characters or codes. However, in reflected light, the authenticating mark was described as imparting a second optical impression which differed from the first optical impression. The authenticating mark therefore displayed an optically variable effect, and either the appearance of the patterns, characters or codes of the authenticating mark were significantly changed in the second optical impression or they completely disappeared.

The Application was opposed on the grounds of lack of novelty, lack of an inventive step, that the invention claimed was not a manner of manufacture, and lack of clarity.

The Submissions

Interestingly, at issue was the meaning of the phrase “light reflected from a highly absorptive, dark background surface” which was cited in both Claim 1 and Claim 4.

The Hearing Officer initially interpreted this phrase to mean that a dark background was used to remove any ambient transmitted light so that only the light reflected off the security device could be seen. The Hearing Officer regarded this understanding of the phrase to be in accord with the Description.

However, the Opponent challenged this interpretation and argued that it was unclear how there can be any light reflected from a highly absorptive, dark surface.

In answer, the Applicant amended the Claims and then submitted that this phrase in Claim 1 meant viewing in a low level of light reflected from a dark background, as even dark backgrounds reflect some light. With regards to the meaning of the phrase in Claim 4, the Applicant submitted that it should be interpreted as viewing light reflected from the security element being held against the dark background surface.

The Hearing Officer held that the Claims in conjunction with the Applicant’s submissions in regards to the Claims, made it impossible to ascertain the invention that is being claimed. No assessment of other grounds of opposition was carried out with regards to Claims 1 to 3 and they were held to be invalid for lack of clarity.

The Applicant is permitted to file a request to amend the Claims within sixty (60) days from the date of the decision.

Take Home Message

It is standard practice in the drafting of Patent Specifications to ensure that the meaning of features and/integers cited in a Claim are consistent throughout the Specification. However, it is worth bearing in mind that any ambiguity in the meaning of phrases used in different Claims could prove to be an Achilles’ heel of what could otherwise have been considered to be a novel and inventive invention.

Furthermore, while there is no file estoppel in Australia, submissions relating to the meaning of specific phrases in a Patent Specification that are filed in a Patent Opposition may obstruct later amendment of the Claims. The amendment of accepted Patent Claims in Australia is not guaranteed and is at the discretion of the Commissioner, or his or her Delegate.

Furthermore, an amendment filed after acceptance is not allowable if it, inter alia, would result in a Claim that does not in substance fall within the scope of the claims of the specification before amendment; or if it would result in the specification failing to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

Thus, even when using ordinary phrases based on their plain English meaning, it remains important to ensure consistency in the use of these phrases throughout all of the Claims.

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