Establishing whether an invention involves an inventive step may at times equate to determining the length of the proverbial piece of string. In Cronk v Commissioner of Patents [2014] FCA 37 the applicant for a patent unsuccessfully attempted three different lines of evidence to prove that the subject invention displayed the requisite “scintilla of inventiveness”.

Background

Paul Andrew Cronk (the “Applicant”) lodged Australian Divisional Patent Application No. 2008229901 (the “Application”) entitled “A luminaire reflector locating arrangement” on 14 October 2008. The Application had a priority date of 27 February 2002. Claim 1 of the Application read as follows:

A locating mechanism for a pair of reflector sheets [102, 122] from which the reflector of a doubly arched luminaire is assembled, said mechanism comprising at least one mushroom-shaped stud [107] on one of said sheets and a corresponding keyhole shaped aperture [127] on the other of said sheets, said stud comprising a stalk [108] and a cap [109] and said aperture comprising a main opening [128] and a smaller extension [129] wherein each said stud and aperture are dimensioned so that said cap can pass through said main opening butnot said extension and said stalk can be retained in said extension with a friction fit.[reference numerals added to the claim refer to the below drawings]

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The above claimed features were aimed at improving certain drawbacks with the reflector described in WO 96/3772 (also in the name of the Applicant). In particular, that reflector was normally sold in knockdown form and was to be assembled by the purchaser. The assembly process proved to be time consuming because of the large number of fasteners to be employed during assembly.

Following a decision by a delegate of the Commissioner of Patents that the claims lacked an inventive step in light of WO 96/3722, the Applicant lodged an appeal with the Federal Court.

Short Overview on Determining Inventive Step under Australian Law

Section 7 of the Patents Act 1990 provides that “an invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed in the patent area before the priority date of the relevant claim” (whether that knowledge is considered separately or together with relevant prior art information).

Robertson J reviewed the case law as it relates to the general principles concerning inventive step. His Honour noted that an “inventive step is often an issue “borne out by the evidence of the experts”” and that a ““scintilla of invention” remains sufficient in Australian law to support the validity of a patent” [at par 51]. His Honour also commented that the common general knowledge was “well understood as being part of the mental equipment of those concerned in the art under consideration” and comprises “the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in the old” citing the High Court decision in Minnesota Mining and Manufacturing v Beiersdorf (Australia) Ltd [1980] HCA 9 [at par 55]. Robertson J concluded his review by noting that whether “a patent is obvious under the Act is still to be determined be reference to the hypothetical non-inventive worker in the field (now a “person skilled in the relevant art”) equipped with common general knowledge” [at par 56].

Consideration by the Court

During the proceedings before the delegate of the Commissioner, the Applicant had relied on the following evidence to support the conclusion of an inventive step. That evidence was also considered by the court

i. Evidence of failure to take an inventive step by a certain inventor active in the field of luminaires
ii. Evidence of particular consumer reaction
iii. Evidence of lack of knowledge by a relevant person

  1. Evidence of failure to take an inventive step by a certain inventor active in the field of luminaires

The Applicant sought through an affidavit by Fraser Old, a patent attorney, to rely on certain patent applications / granted patents citing a certain John Ferguson as inventor. Mr Old had drafted the specifications of one of the applications. It was put on behalf of the Applicant that it was reasonable to conclude that while Mr Ferguson was turning his mind to improving the Applicant’s original invention from the point of view of convenience of assembly, it did not occur to Mr Ferguson to proceed in the manner proposed in the Application.

Robertson J held [at pars 85 and 86] that on “this evidence I am not persuaded to draw the inference for which the applicant contends in relation to Mr Ferguson’s patent. I am not persuaded that the problem referred to in Mr Cronk’s current application was a problem with which Mr Ferguson’s patent was concerned or that, therefore, anything is to be drawn from Mr Ferguson not proposing the solution proposed by Mr Cronk in his current application. Mr Ferguson was not called as a witness to say that he was faced with the problem which Mr Cronk’s application addresses and that he, Mr Ferguson, did not come up with that solution. No reason was proffered before me as to why, if that was Mr Ferguson’s opinion, that course could not have been taken”.

  1. Evidence of lack of knowledge by a relevant person

The Applicant further relied on evidence by one Grant Creevy, the Chief Executive Officer of Accent Hydroponics Pty Ltd, a company which manufactures electrical products, including light fittings predominantly for hydroponic use. Mr Creevy concluded his evidence by stating that “(u)ntil the introduction of the product described…” in the Patent Application “… about 2002, I was not aware of the mushroom studs and key hole shaped apertures were a possible interconnection device for a pair of metal sheets”.

The court [at par 88] concluded that “Mr Creevy did not qualify as a skilled worker or addressee. The evidence about him was no more than that he was the Chief Executive Officer of… a company which manufactured electrical products including light fittings predominantly for hydroponic use”.

The court contrasted Mr Creevy’s evidence with that of James Stephen Furzey,the expert relied upon by the respondent. Mr Furzey gave extensive evidence on his experience and deposed to the main types of fasteners typically used in luminaires in Australia. The court [at par 100] proceeded to “accept the respondent’s submission that through Mr Furzey’s evidence and through the examples he gave of the documents he had located there was a range of fastener and fixing mechanisms which included keyhole slots and studs which achieved a friction fit which could be used, and had been used, by those skilled in the art working in the field of lighting in Australia before the priority date and being part of the knowledge available to all in the field and to be applied to the problem. It would be a matter of routine to try or use this mechanism with a view to seeking to solve the problem”.

  1. Evidence of particular consumer reaction

The Applicant finally relied on evidence by one Josh King who had operated a hydroponics outlet since 2006. The evidence of Mr King indicated that his customers refused to purchase a product where the mushroom studs had been drilled out and replaced with bolts. The evidence related solely to a defective product that was altered to imitate the former product. Customers were unwilling to purchase the defective product that had been altered, even at a discounted price.

The court [at par 87] held that the “evidence of Mr King is also in my opinion too slight and insufficient to constitute evidence of the commercial success of the claimed invention. Mr King does not seem to have been involved as a retailer until 2006, some four years after the priority date. More importantly, the fact that his customers refused to purchase at a discount some defective reflectors as modified by Mr King provides an insufficient basis to infer commercial success of a product embodying a claim in the Application. I am not prepared to draw the inference that the behaviour of Mr King’s customers is probative of the commercial success of the product derived from Mr Cronk’s application. There was no direct evidence of commercial success”.

Decision

The court stated [at par 82] that “the evidence was, in my opinion, too slight to establish the applicant’s case”. The court according held [at par 103] that “the evidence does not establish that the invention, so far as claimed in any claim, when compared with the prior art base as it existed before the priority date of the claim involves an inventive step. That is, the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed before the priority date”.

Take Home Message

Patent professionals are again reminded to take great care to ensure that any expert employed in proceedings before the Patent Office and the courts do in fact qualify as a “person skilled in the art”. The affidavits of the experts for the Applicant in this matter appear to have been classified as“too slight” for making certain inferences in favour of the inventive step of the Application. That appears to be the result of the evidence for the Applicant failing to provide sufficient reasoned basis upon which the court could make the inferences proffered by the Applicant.

It is important to note that this case was determined before the provisions of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) came into effect. One of the most important provisions of that Act was to increase the level of inventiveness required for patentable inventions. It is expected that even greater care will in future be required in the preparation of evidence to support the inventive step of an invention.