In a recent article Patent Attorney Dr Mark Sommerfield comments on the 6 January Productivity Commission report on the country’s IP system.

Patents in Australia (and elsewhere in the world) are not issued unless there is “inventiveness” in the process or “invention” which is not “obvious”. If the bar is set too low a patent holder has a monopoly which will prevent others using the process without permission. This can hold back necessary innovation. On the other hand, setting the bar too high is a disincentive to inventors or genuine innovators making necessary advances without economic protection of their efforts and depriving them of any reasonable reward for their effort and innovation.

Dr Sommerfield says the real challenge in raising the bar is to change qualitatively what we mean by “inventiveness” and not try to measure the quantity of inventiveness involved. It should be more clearly either “inventive” or not. He says that where Australia really departs from the rest of the world arises out of a poor decision by the High Court in the 1980 “3M case” (Minnesota Mining and Manufacturing Co v Beirsdorf (Australia) Limited 1980 HCA 9) which qualified the inventiveness or “not obviousness” of a purported invention by reference to what products were known or used in Australia on or before the priority date of that claim rather than “all matters (whether a product, a process, information about either, or anything else) which has at any time before the priority date of that invention) been made available to the public (whether in Australia or elsewhere) by written or oral description, by use or in any other way” (adopting a paraphrased wording of the 1977 UK Act).

In other words, he says what is required is “a broad and objective approach to the prior art against which an alleged invention is assessed” and “that the entirety of the publicly-accessible state of the art is available, in principal, to the notional skilled persons employed as exemplars of ordinary, non-inventive, activity”. He says then that a flexible evidence based approach is necessary to assess what is or is not “obvious” or “routine” activity at the relevant priority date. In this way the ultimate decision maker is in the position of a non-inventive skilled worker with the most relevant prior art information at his or her disposal when asking the question, “Was this obvious?” or, alternatively, “inventive?”.