Shyama Jayaswal  
Senior Associate

Robert Cooper  
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Kim O'Connell  

Robert Cooper  
Wayne McMaster  

John Swinson  

03 November 2005

Patents: the person skilled in the art is a hypothetical person

The Federal Court in the recent case NutraSweet Australia Pty Ltd v Ajinomoto Co., Inc [2005] FCA 1524 held that the person skilled in the art is a hypothetical person. It found that a party’s inability to find a real person in Australia with the relevant experience at the priority date to be an expert does not mean that the invention is necessarily inventive.

In Australia the test for inventive step (obviousness) relies on a test involving a person skilled in the art at the priority date of the patent in suit. The decision is important because for many of the patents which are disputed, there has not been relevant research activity in Australia.

The technology in question related to artificial sweeteners. The patentee, Ajinomoto, submitted evidence that no research was undertaken in Australia to identify or evaluate compounds which may be blended to improve their sweetness quality. Ajinomoto thus argued that the attack based on obviousness must fail because there is no person (or team) in Australia who was skilled in the art.

Justice Finkelstein rejected this argument as inconsistent with authority and principle. He cited the case of Gambro v Fresenius Medical Care (2004) 61 IPR 442. In that case the technology was dialysis machines but no-one in Australia was involved in developing and improving such machines. Despite this, the judge found it possible to identify a skilled person to judge the inventiveness of the claimed invention.

The decision in Nutrasweet held that an assumption that a patent can only be struck down for lack of an inventive step if there is some industry in Australia which would be affected by the grant of the patent is wrong in principle. It reads into the Patents Act something which is unable to be implied. If there is information in Australia, including information in widely circulated international textbooks and journals, which would ordinarily be referred to by someone interested in the area, then that information cannot be ignored when deciding whether an invention is obvious. “If such information were to be ignored Australia would become a resting ground for bad patents.”

In this case, there were people who worked in closely related areas who had an interest in and understanding of the relevant information. Additionally, the major international manufacturers recruited researchers globally, including from Australia. Justice Finkelstein considered this sufficient to enable consideration of what would have been the common general knowledge of the person skilled in the art and whether the claimed invention satisfied the test for inventive step. He went on to find the patent invalid for lack of inventive step.

There have been a number of decisions in recent years which have made it difficult to prove inventive step in Australia. This decision provides a practical approach to the question of evidence relating to inventive step which takes into account the realities of research in Australia. Both parties to a patent dispute will now be able to construct the skilled person which will go some way to making it easier to prepare evidence regarding interpretation, inventive step and novelty.