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The Full Federal Court considered the construction of section 7(3) of the Patents Act 1990 (Cth) (“Act”) in the recent case of Ajinomoto Co Inc v Nutrasweet Australia Pty Ltd [2008] FCAFC 34. Section 7(3) permits additional documents to be added to the common general knowledge for the purpose of assessing if the invention is obvious.
The decision is important because of the Court’s construction of the phrase “relevant to work in the relevant art in the patent area” in s 7(3) as well as its findings of fact in relation to the relevant art. Whilst the decision considers s 7(3) prior to the amendments in 2001, the unamended section continues to apply to all patents having a filing date before 1 April 2002.
Section 7(3)
The decision highlights the importance of ensuring that the evidence in relation to inventive step deals with each and every part of s 7(3). That is, that a skilled person could be reasonably expected to have ascertained, understood and regarded as relevant (to work in the relevant art in [Australia]) the document which is relied upon for the lack of inventive step allegation.
The words “to work in the relevant art in [Australia]” were removed from section 7(3) by amendments to the Act in 2001 for patent applications lodged after 1 April 2002, but the section still requires that the document be considered “relevant”.
Impact of the decision
The following two important points regarding the interpretation of s 7(3) are made in the decision.
- The words “work in the relevant art in [Australia]” refer to work that has actually been carried out in Australia. It does not extend to hypothetical work (that is, work that could have been performed in Australia). However, the evidence of work in Australia need only be closely related to the relevant art.
- The word “relevant” does not attract a requirement that the document, or a specific disclosure within the document, “stand out from the crowd” of possible relevant documents as the solution to the problem.
Background
The patent related to an artificial sweetener composition which comprised a blend of known sweeteners. Nutrasweet commenced revocation proceedings in 2005 against the patentee, Ajinomoto, on a number of bases including lack of inventive step. When combined with the common general knowledge in the field, the trial judge held that a 1993 French patent (the “Noffre Tinti specification”) rendered obvious Ajinomoto’s claimed blend of sweeteners.
On appeal, Ajinomoto argued that on the proper construction of s 7(3), the Noffre Tinti specification could not be considered when deciding the issue of inventive step because there had not been any “work in the relevant art” carried out in Australia. Further, Ajinomoto argued that Nutrasweet’s case failed as there was no evidence demonstrating that compound six within the Noffre Tinti specification “stood out from the crowd”.
“Work in the relevant art in the patent area”
The Full Court gave the phrase its ordinary and natural meaning, and held that “work” means work that has actually been carried out in Australia. It does not include hypothetical work (that is, work that was never in fact undertaken in Australia). This was the construction which Ajinomoto proposed and thus it succeeded on this point.
However, Ajinomoto was ultimately unsuccessful on appeal because it misconstrued the relevant art. To support its assertion that no “work” had been undertaken in Australia, it relied on the finding that no research in Australia was undertaken to identify or evaluate new compounds that were capable of being blended to improve their sweetness quality.
However, the Full Court emphasised that the Ajinomoto patent was not concerned with the discovery of new sweetener compounds, but rather with the blending of known sweeteners. Once the art was properly identified as being the blending of known sweeteners, it was clear that there was “work in the relevant art in [Australia]” on the evidence before the trial judge. The evidence indicated that such blending had taken place in Australia since the 1960s.
“Stand out from the crowd”
The Full Court did not accept Ajinomoto’s submission that s 7(3) requires that the particular document “stand out from the crowd” and confirmed that “relevant” in s 7(3) has a relatively low threshold.
In any event, even if the Full Court had accepted Ajinomoto’s submission, there was in fact evidence from Nutrasweet’s witnesses explaining why they would have selected compound six from Noffre Tinti as a prime candidate for their sweetener blend and Ajinomoto would still have lost the appeal.
As a result, the appeal against the revocation of the Ajinomoto patent was dismissed.