In my post of 16 June 2005, I discussed the matter of Jupiters Ltd v Neurizon Pty Ltd  FCAFC 90 . That matter was referred back to the Federal Court in Neurizon Pty Ltd v Jupiters Limited  FCA 1177 for the determination of lack of inventive step asserted by Jupiters Ltd. Her honour, Kiefel J, handed down the decision on 25 August 2005, holding that Jupiters could not show lack of inventive step.
In this matter, Neurizon applied to make an amendment to the claims in the light of anticipatory material presented by Jupiters. For the purposes of this post, it is only necessary to point out that there should not be undue delay in seeking an amendment. Thus, once a patentee or applicant is aware of a claim that is overly broad, he or she should seek to amend the claim within a reasonable time. The purpose of this requirement is to ensure that the public is not prejudiced by an excessively broad patent on the register. In this case, her honour held that Neurizon only became aware of the need to make the amendment after the Full Federal Court decision. In fact, it was found that Neurizon had earlier canvassed the possibility of amending with its patent attorney, who advised that the amendment was unnecessary. Her honour allowed the amendment.
The inventive step requirement of our Patents Act is governed by Section 7(2) which states that: "For the purposes of this Act, an invention is 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, ... ".
Her honour briefly referred to Aktiebolaget Hassle v Alphapharm P/Limited (2002) 212 CLR 411 (Aktibolaget), which warns against the use of hindsight when making a determination of inventive step. In the Full Federal Court it had been found that a system used by Jupiters anticipated the invention claimed by Neurizon. However, Jupiters had been unable to show that there had been an enabling public disclosure of the anticipation. Her honour thus held that the Jupiters system did not form part of the common general knowledge and therefore could not found an attack based on lack of inventive step. In particular, her honour held that the witnesses relied upon by Jupiters were not able to give evidence about the process by which the Jupiters system was derived, the paths taken and the problems solved. In other words there was insufficient evidence about the origin of the Jupiters system to make it relevant.
Her honour held that witnesses presented by Jupiters not only lacked the necessary skill to qualify, but also developed their evidence using hindsight. Furthermore, where Jupiters did present a witness who could have qualified as a person skilled in the art, that witness relied on material which was held not to form part of the common general knowledge.
This case emphasizes the difficulty of "getting up" on a lack of inventive step argument. Not only is the relevant party confronted with the difficulty of framing witness questions to avoid hindsight, but also has to be very careful when selecting material to form part of the common general knowledge.