Who does this affect?

Anyone involved in drafting and filing patent applications in Australia or anyone involved in a patent dispute in Australia.

What do you need to do?

Be aware of the impact of the decision on patent drafting strategy or assess how the decision affects your position in litigation.

Author
Shyama Jayaswal  
Senior Associate

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Robert Cooper  
Partner
T +61 3 9643 4405

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Wayne McMaster  
Partner
T +61 3 9643 4407

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Sydney
Kim O'Connell  

Brisbane
John Swinson  

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The Full Federal Court of Australia (Full Court) has handed down a decision which provides some guidance on when statements in a patent specification are considered to be admissions of common general knowledge (CGK) for assessing when an invention is obvious. It serves as a useful reminder to carefully consider what statements about the prior knowledge should be included when drafting the patent specification to minimise the likelihood that any statement will be considered an admission.

In the recent decision of Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139, the Full Court applied the High Court’s ruling from Lockwood v Doric (No 2) (2007) 72 IPR 447 that admissions in a specification about common general knowledge, while relevant, must be assessed as to their probative force like all other evidence. The Full Court concluded that it was thus necessary to pay “close attention to the terms of the individual specification in which the admissions are said to be made”.

In this case, the Full Court held that the references to the various earlier US patents in the patent specification did not amount to admissions by the inventor that this information had become part of the CGK in Australia. Further, the Full Court stated that even if there was an admission that certain information formed part of the CGK in the USA, it would not follow, in the absence of evidence somehow equating the two, that it was an admission that the information formed part of the CGK in Australia.

The reason for the above finding was that the Full Court took the relevant passages in the Background to the Invention to represent the personal story of progressive improvements made by the inventor in developing the invention. These passages were only admissions of the inventor’s knowledge. This was contrasted to the finding in Wrigley v Cadbury (2005) 66 IPR 298 where the description of the problem to be solved was clearly in terms of that which was publicly known.

With respect to the question of determining what is the invention, the Full Court noted that section 18 of the Patents Act 1990 refers to the invention “so far as claimed in any claim”. Accordingly, the invention is that which is defined in the claims and not the invention as described in the complete specification. The Australian Patents Act 1990 thus requires the analysis which the House of Lords has recently adopted for the UK in Conor Medsystems Inc v Angiotech Pharmaceuticals Inc [2008] UKHL 49 at [17-19].

Comment

There are varying opinions in different jurisdictions about whether or not to comment on the prior art in the patent specification. In some jurisdictions, it is necessary to include statements about the closest prior art (eg Europe) whereas in other jurisdictions it is possible to make no reference to any prior art (eg Australia and USA). Some US drafted specifications make no statements about the prior art and simply start describing the invention.

In Australia, whilst it is not mandatory, it is common to make some statements about the prior art to assist the court with understanding the invention in the context of the prior art. If there is no discussion of the prior art in the patent specification, then in any litigation, the patentee must rely on the evidence of the inventor and experts to place the claimed invention in the context of the prior art at the time. This then raises evidentiary issues of hindsight which would not otherwise arise since the Background to the Invention is usually drafted at the filing date.

This case demonstrates that it is possible to include a Background to the Invention which is informative without the statements being held to be admissions relevant to the validity of the claimed invention. We recommend that the usual practice of including some statements about the prior art continues, provided that they are carefully drafted to make it clear that the statements are not admissions about the common knowledge of those working in the field in Australia.