Post-Grant Re-examination Loses Some Teeth
On 25 July 2005, Lindgren J. handed down Emperor Sports Pty Ltd v Commissioner of Patents  FCA 996. This is the first time that the Australian Federal Court has been required to consider section 97(2) of the Patents Act 1990, which provides for post-grant re-examination of a patent.
By way of background, the relevant section provides that the Commissioner must re-examine a complete specification if asked to do so by the patentee or any other person.The regulations provide that the request must identify the documents on which an assertion of lack of novelty or inventive step (obviousness) is made. The request must state the relevance of the documents. The Act directs the Commissioner to ascertain and report whether, to the best of his or her knowledge, the invention is not novel and does not involve an inventive step. If the Commissioner makes an adverse report the patentee may dispute the whole or any part of the report, whether or not steps are taken to amend the specification. If the Commissioner has given the patentee a reasonable opportunity to be heard and given the patentee a reasonable opportunity to amend the the specification and the patentee fails to do so, the Commissioner must revoke the patent.
In brief, the relevant claim covered: "A device for use in sport, including one or more indicia, the, or each, indicium being adapted for removable attachment to a user's garment, such that in use and when attached to a user's garment, the removal of the, each, or one or more of further indicia indicates a predetermined result." In making the request for re-examination, the Australian Football League (AFL) identified eight US patents together with a statutory declaration. During the proceedings, Emperor attempted to amend the claim as follows: "A device for use in sport when used in the game of Rugby League or Australian Rules football, the device including one or more indicia...further indicia takes the place of a tackle in the game."
The Commissioner's Decision
The delegate of the Commissioner decided that the amendment was not allowable and that the patent should be revoked. The procedure followed by the delegate was flawed in that the issue of the amendment should have been settled first before the decision to revoke. However, the parties agreed that no injustice had occurred and Lindgren J. thus dealt with both the application for amendment and the decision to revoke together.
The Court's Decision
In connection with the amendment, the wording of the Act is important and, in particular, section 102(1) provides that an amendment of a complete specification is not allowable "if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed". The court held that the amendment was allowable. In coming to this conclusion Lindgren J. raised an interesting point concerning interpretation.
One of the reasons provided by the delegate for refusing the amendment was that by amending "a device for use in sport..." to "a device when used in...", the claim was being amended from a device claim to a method claim and there was no disclosure in the specification of a "method of playing Australian Rules football". Lindgren J. held that the delegate was putting too fine a point on it and held: "I regard all of the original claims as, in substance, method or process or means claims, rather than pure device claims."
The revocation decision was considered by Lindgren J. with the claims in the notionally amended form.
In having to decide the issue of inventive step, the delegate and the Court had to make a decision as to whether information in cited documents (a) formed part of the common general knowledge of a coach, referee or administrator; or (b) is information which such a person could be reasonably expected to have ascertained, understood and regarded as relevant. Lindgren J. held that it is not possible to make such a decision in the absence of evidence. In the absence of evidence " resolution of these issues is a matter of mere speculation." His honour based this contention on well known judicial precedents, such as Minnesota Mining and Manufacturing Co. v Beiersdorf (Australia) Ltd (1980) 144 CLR 253. While that may be, the problem is that post grant re-examination proceedings are ex parte. In other words, the Commissioner cannot hear evidence from coaches, referees or administrators.
His honour thus concluded that "the Commissioner was not at liberty to decide whether a hypothetical person skilled in the art would have ascertained the existence of the Cited Documents. In the absence of evidence, the Commissioner was relegated to speculation. The Commissioner did not give effect to the opening words of s 7(2) of the Act... ".
The decision has serious ramifications for pre-grant examination, which is also ex-parte. In fact, immediately preceding the above passage, his honour stated that he saw no reason why the approach taken in pre-grant examination should not be taken in relation to post-grant re-examination. As any practitioner knows, the Commissioner regularly makes decisions regarding inventive step.
Lindgren J. went on to state that he appreciates that his conclusion may signify that post-grant re-examination may not readily lead to revocation on the ground of lack of inventive step. His honour then made some surprising statements, to say the least:
a) "The procedure has a greater role to play in relation to novelty."
b) "It always remains open to a third party requesting re-examination to bring a revocation proceeding."
c) "The re-examination procedure may have the beneficial effect of leading to amendments."
It is not clear to Bazpat how his honour comes to the conclusion in (a). The statement (b) undermines the purpose of the post grant re-examination procedure. The statement (c) is in Bazpat's view a specious argument.
It will be interesting to see what, if any, fall out there is from this decision. Bazpat will be keeping an eye out.