Emperor wins on Inventive Step

Griffith Hack recently acted for Emperor Sports Pty Ltd (“Emperor”) in a successful appeal to the Federal Court from a decision of the Australian Commissioner of Patents in a re-examination of Emperor’s patent (believed to be the first such appeal).  As a result of the decision, patent examiners in Australia may well have even greater difficulty in refusing patent applications for lack of inventive step.

The patent concerns apparatus and method for playing modified versions of Rugby League and Australian Rules Football (so-called “touch” or non-contact versions of each game). The Australian Football League filed a request for re-examination with the Commissioner of Patents, citing a number of prior art documents. During the re-examination proceedings Emperor restricted the scope of its claims to apparatus and methods specifically for playing the modified versions of Rugby League and Australian Rules Football. The Commissioner refused to allow these amendments and further decided that, even if they had been allowed, the patent would still be invalid for lack of inventive step, although the claims were now novel.

More particularly, the Commissioner held that a skilled person would have “ascertained” the documents cited by the AFL, despite a lack of evidence to support this finding. Section 7 of the Australian Patents Act requires that when considering whether a claim lacks inventive step in light of prior art documents, it must be shown that a person skilled in the relevant art would have "ascertained, understood and regarded as relevant" the information in such documents. On appeal, the judge, Justice Lindgren, stated "In the absence of evidence, the Commissioner was not at liberty to decide whether a hypothetical person skilled in the art would have ascertained the existence of the Cited Documents. In the absence of evidence, the Commissioner was relegated to speculation."

In other words, if it can’t be shown by evidence that prior art documents would have been ascertained by a skilled person, then they can’t be considered in an inventive step objection. This will present a difficult prospect for a Patent Office examiner.

Yet again the decision demonstrates how Australian law on inventive step differs from that in the US and Europe. This is because the Patents Act regulates what prior art documents can be considered when deciding inventive step. 

For more information, please contact Griffith Hack partners:

Robert Wulff – robert.wulff@griffithhack.com.au

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