Those of you who regularly prosecute patents in Australia will be aware that Australia has a unique approach to inventive step/non-obviousness. Specifically, Australian law differs from international norms in two fairly notable ways:
Firstly, not all prior art references are citable. Rather, in order to be citable, a prior art reference must firstly be shown to be a piece of prior art information that the skilled person could have been reasonably expected to have “ascertained, understood, and regarded as relevant”.
Notably, prior art references have been excluded from consideration because (i) the prior art reference was published a short time before the priority date of claim under consideration and was not widely available (Wrigley), (ii) the prior art reference was not in the English language (Euroceltique), and (iii) the prior art reference was not directed to solving the same problem as the problem solved by the claimed invention (Lockwood).
Secondly, since the landmark High Court decision in Aktiebolaget Hassle v Alphapharm Pty Ltd  HCA 59, “obvious to try” does not make an invention obvious in Australia. In that High Court decision, the standard for determining inventive step/non-obviousness was stated as follows:
“Would the notional research group at the relevant date in all the circumstances…directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result].”
This meant that, in circumstances where a range of alternatives was available (this often being the case in the chemical arts), there must be evidence that the person skilled in the art would go directly to the claimed alternative for inventiveness to be destroyed.
It is widely known that moves are afoot to better harmonise Australian law with international norms via the elimination of the “ascertained, understood and regarded as relevant” prerequisite for a prior art reference to be citable. What is perhaps less well known is that the APO is quietly moving to issue rejections based on the “obvious to try” standard. We will, of course, be on the lookout for any office actions which adopt this improper approach.
Today’s post is by Guest Barista Bill Bennett of Pizzeys.