Patent revocation for lack of novelty

One of the often cited requirements for a patent to be granted, is that the invention as claimed must be ‘novel’ in light of the information of the day (referred to as the prior art and the common general knowledge) (section 18(1)(b)(i) of the Patents Act 1990 (Cth) (Patents Act)).  Put simply, if its been done before, chances are that it may lack novelty.  Therefore, if a patent, when viewed against the prior art and common general knowledge does not disclose an invention that is novel, it cannot be said to contain the required feature of novelty.

Application of the Patents Act to novelty

Section 18(1)(b)(i) of the Patents Act is as follows:

• “Subject to subsection (2), an invention is a patentable invention for the purposes of a standard patent if the invention, so far as claimed in any claim:

   …

           (b)  when compared with the prior art base as it existed before the priority date of that claim:

                    (i)  is novel…“

Section 7 of the Patents Act is as follows:

“(1)  For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

• prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
• prior art information (other than that mentioned in paragraph(c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;
• prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1. “

The reverse infringement test

The appropriate test for determining whether a patent lacks novelty is the “reverse infringement test” found in Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19 at [20], which states:

“the basic test for anticipation or want of novelty is the same as that for infringement and generally one can properly ask oneself whether the alleged anticipation would, if the patent were valid, constitute an infringement.”

This test is satisfied if the alleged anticipation discloses all the essential features of the invention as claimed.   Australian courts have often cited, with approval, the words of the UK Court of Appeal in The General Tire & Rubber Company v The Firestone Tyre and Rubber Company Limited [1972] RPC 457 at 485-486:

“If the prior inventor’s publication contains a clear description of, or clear instructions to do or make, something that would infringe the patentee’s claim if carried out after the grant of the patentee’s patent, the patentee’s claim will have been shown to lack the necessary novelty, that is to say, it will have been anticipated.”

It is not sufficient if the alleged anticipation is merely a signpost upon the road to the patentee’s invention. The prior inventor must be clearly shown to have planted his flag at the precise destination before the patentee (General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd (1971) [1972] RPC 457 per Sachs LJ).

How does a respondent to infringement establish lack of novelty?

Much like the process of proving infringement of a patent, this process requires a comparison of the alleged novelty defeating item of prior art against all the essential integers of the patent in suit (or the relevant claims therein).  In essence, the question is:

are all the essential integers of the alleged infringed patent present in the item of prior art in question?

Who is the best person to conduct the assessment or provide evidence?

When making a decision regarding whether or not an item of prior art is novelty defeating (using the reverse infringement test), the Court will consider the issues from the perspective and with the knowledge of the person skilled in the art (sometimes referred to as the “skilled addressee”).  The skilled addressee is someone to whom a patent specification is directed at and has the common general knowledge to apply to the patent at the priority date.

As Finkelstein J said in Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [70]:

“He [the skilled addressee] is the person to whom the patent is addressed and who must construe it.  He is the person whose knowledge will determine whether a patent is novel.  He is the person who will judge that the patent is obvious.”

When considering the issue of novelty, the skilled addressee will be calling upon their knowledge of the industry (the ‘common general knowledge’ or CGK).  Aickin J discussed the notion of the common general knowledge in Minnesota Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253 at 292:

“The notion of common general knowledge itself involves the use of that which is known or used by those in the relevant trade. It forms the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old, and it must be treated as being used by an individual as a general body of knowledge.

The skilled addressee will therefore generally be a person who works in the art or science with which the invention is connected (Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980 at [71], citing Plimpton v Malcolmson (1876) 3 ChD 531 at 556).

Can items of prior art be combined to be novelty defeating pursuant to section 7(1) of the Patents Act?

Generally speaking, as outlined in the cases above, the form of an anticipation will be in the form a single document or disclosure.  However, there is provision for more than one document or disclosure to be combined together for the purposes of considering novelty, but only where such combination would be treated as a single disclosure.

Section 7(1)(b) of the Patents Act provides that:

“(1)  For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

…

(b)  prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information;

…

Can a ‘mosaic’ of features be combined to create novelty defeating prior art?

The term mosaic has been used to describe where a number of disclosures or sources of prior art have been combined in a manner to provide (what is argued to be) a single disclosure.  While it is clear that section 7(1)(b) envisages the combination of related documents, the threshold for doing so is quite high.

In Nicaro Holdings Pty Limited; Matflo Engineering Pty Limited and Richard Couper v Martin Engineering Company and ESS Engineering Services & Supplies Pty Limited [1990] FCA 40, Lockhart J at [21]:

21. The invention must appear in a single disclosure, so it is not permissible to make a pattern or mosaic of or to read together various pieces of prior art in different patents. It is, however, permissible, to refer not only to the patent relied on as the source of disclosure but to another patent or other patents incorporated by reference provided that it is plain that the incorporation by reference unequivocally and plainly demonstrates that the draftsman has adopted the cross referencing system solely as a shorthand means of incorporating a writing disclosing the invention: George C. Warner Laboratories Pty. Limited v Chemspray Pty. Limited (1967) 37 AOJP 2513 at 2516; Blanco White 5th Ed. at para. 4.107 and Gratwick “Having Regard to What was Known and Used” (1972) 88 LQR 341 at 343.

Based on Lockhart J’s comments, it would not seem to be as easy as just noting the footnote and creating a mosaic on that basis.  Lockhart J went on to comment at [22] about cross-referencing in patents relating to combination patent:

22. In the case of combination patents cross-references in one specification which has some of the elements of a combination patent to another specification which has other elements do not disclose the combination. The essential point is that it is the combination which must be disclosed in the case of a combination patent: Blanco White para. 4.107.

Takeaways

Patents are designed to encourage innovators who have invented something novel to obtain protection over that invention.  If the invention is not novel, and there is prior art that takes all the essential integers of the patents’ claims, then the patent may be invalid for lack of novelty.  Determining whether a patent lacks novelty can be an intricate exercise which requires significant effort.

Legislation

Patents Act 1990 (Cth)

Cases

H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70
General Tire & Rubber Co v Firestone Tyre and Rubber Co Ltd (1971) [1972] RPC 457
Meyers Taylor Pty Ltd v Vicarr Industries Ltd [1977] HCA 19
Mining and Manufacturing Co v Beiersdorf (Aust) Ltd (1980) 144 CLR 253
Nicaro Holdings Pty Limited; Matflo Engineering Pty Limited and Richard Couper v Martin Engineering Company and ESS Engineering Services & Supplies Pty Limited [1990] FCA 40
Plimpton v Malcolmson (1876) 3 ChD 531
Root Quality Pty Ltd v Root Control Technologies Pty Ltd [2000] FCA 980

Further information about patent infringement and revocation

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Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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