A new consultation regarding legislation that will change the way inventive step is considered for Australian patents has been announced, with the intention being to raise the threshold by aligning with European standards. In future, the EPO “problem-solution” test will usually be adopted when assessing inventive step in Australia, which is a different assessment from the lower level problem-solution assessment currently used here.
It remains to be seen whether other aspects of the European inventive step assessment will also be imported into Australian practice. A principal reason for the current difference in standards is that the circumstances under which two prior art documents can validly be mosaicked to sustain an obviousness attack are much broader in Europe. Unless this aspect of Australian practice also changes, the legislative amendments may not have as significant an effect as desired.
A European-style inventive step test
There have been long-standing concerns that the bar to obtaining patent protection in Australia has been set too low. [i] On 23 July 2018, IP Australia announced a consultation into proposed legislative amendments, which include fundamental changes to the inventive step provisions.[ii] A decision to raise the threshold has already been taken, and the new consultation goes to the wording of the new draft provision:
“S.7 (2) For the purposes of this Act, an invention is taken to involve an inventive step when compared with the prior art base if the invention is not obvious to a person skilled in the relevant art.”[iii]
New section 7(2) closely resembles Article 56 of the European Patent Convention, and the intent is to raise the level required for inventive step in Australia by adopting the approach used by the European Patent Office (EPO).[iv] Now is a good time to take a look at the European approach to inventive step, and consider the issues that might arise in trying to adopt a similar test here.
The problem-solution test
As most practitioners will know, the EPO uses a “problem-solution” approach for assessing inventive step involving:
(i) determining the “closest prior art”, ie. identifying a document which is directed to a similar purpose as the claimed inventions, and which discloses features constituting the most promising starting point;
(ii) establishing the “objective technical problem” to be solved, by determining the difference(s) between the claimed invention and the closest prior art, establishing the resulting technical effect, and formulating a problem to be solved based on trying to achieve that technical effect;
(iii) considering whether the solution provided by the claimed invention would have been obvious to a skilled person, starting from the closest prior art and given the objective technical problem.[v]
Australia already has its own problem-solution test, but this typically operates at a step back from the EPO assessment, leading to a lower threshold that needs to be reached. In Australia, the problem is often formulated with reference to the common general knowledge, rather than by comparing the claims with the closest prior art document as in Europe. However, the draft Explanatory Memorandum accompanying the draft Australian legislation has made it clear that, following the changes, the EPO approach is the one which will usually be adopted.[vi]
A critical question is whether there will be a change in the extent to which multiple prior art documents can validly be combined when challenging inventive step. Whilst in theory “mosaicking” of documents is already possible in Australia, in practice the permissible circumstances are very limited, and do not extend far beyond cases where one document cross-references the other, or where a combination is made with a well-known textbook or dictionary.[vii] The current reality in Australia is that in most situations inventive step is considered only in view of a single prior art document (and the common general knowledge) at a time.
In contrast, in Europe it is common for EPO Examiners to raise and maintain obviousness objections based on two-document combinations, of the closest prior art and another document, as long as there is no incompatibility in their teaching and they are not in remote fields. The US goes further, with USPTO Examiners being known to mosaic three or more documents when raising obviousness objections. Although mosaicking in Europe does not go so far as the US, the willingness of the EPO to assess inventive step based on combinations of documents is arguably the biggest reason for the current difference between the inventive step standards in Australia and Europe. It is difficult to see how the threshold will be raised to a similar standard in Australia without there being a shift in mosaicking practice here.
As a practical point, and at the risk of stating the obvious, being able to direct an Australian Examiner to a granted or accepted European patent with similar claims to those being pursued in Australia, will likely be of assistance in many cases following the changes.
Once introduced, the changes will clearly benefit those looking to challenge an Australian patent. Alongside other changes brought in by the Raising The Bar Amendments in 2013,[viii] opponents will have considerably greater firepower at their disposal compared with the position a decade ago. Attorneys will also have to take the new inventive step provisions when considering new inventions and drafting specifications, although many in the Australian profession already consider standards in Europe, the US and other major countries when drafting.
With the move towards a European-style test, EPO Board of Appeal decisions will likely become of greater persuasive weight to Australian decision makers. There are however a number of aspects of EPO law where the accepted position has shifted over time, partly since EPO Boards of Appeal are not bound by earlier decisions and are free to develop the law. Given that, maintaining an awareness of the current European position in relevant areas will likely become even more important for Australian practitioners than it is already.
Whilst an EPO-style problem-solution approach may become the norm for assessing inventive step in Australia, the Draft Explanatory Memorandum sets out that there will be flexibility to adopt other tests in some circumstances.[ix] This is also welcome, since although the rigid approach of the EPO in following problem-solution provides relative legal certainty, it is not necessarily the best approach for all situations.
Interested parties have until 31 August 2018 to make submissions on the draft legislation.