Prior to 2012, s 7(3) of the Patents Act 1990 (Cth) identified the prior art beyond common general knowledge (CGK) that may be taken into account for the purposes of inventive step by reference to information which the notional person skilled in the art (PSA) could reasonably be expected to have “ascertained, understood and regarded as relevant.”
“Ascertained” simply means discovered or found. However in practice, in litigation this requirement often led to a body of evidence to show such ascertainment, and challenges to whether documents met the required standard.
The Intellectual Property Law Amendment (Raising the Bar) Act 2012 (Cth) (RTB Act), made important changes to the prior art base for the purposes of assessing inventive step. In particular, s 7(3) was amended to remove the requirement that the PSA could be reasonably expected to ascertain, understand and regard as relevant the information in the prior art base. That is, any document or use that was publicly available anywhere in the world may be used to found an attack on obviousness; it need not be shown that the PSA could be reasonably expected to have found (ascertained) it.
The Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (EM) discusses several problems with the “ascertained” restriction, mainly that information that is clearly relevant may be excluded on the basis that the PSA would not have ascertained that information. Separately, the Federal Court also noted that when the ability of the PSA to ascertain relevant prior art is in doubt, the need for evidence to resolve the dispute (as mentioned above) adds cost and uncertainty to litigating patent disputes. The EM further noted that the requirements that prior art be “understood” and “regarded as relevant” are implicit in the pre-existing tests for inventive step, and that:
“… the changes are not intended to substantially change the operation of the existing tests for inventive step as applied to the prior art base or to permit hindsight analysis. While a skilled person is essentially deemed to be aware of and to have carefully read the publically available information, the inventive step tests are otherwise applied in the context of what the skilled person would have known and done before the priority date of the claims in question. The tests will therefore continue to take account of factors such as whether the skilled person would have understood and appreciated the relevance of the prior art to the problem the invention was seeking to solve and whether it would be considered a worthy starting point for further investigation or development.”
In other words, according to the EM: a.) a PSA is deemed to be aware of (i.e., ascertained) publicly available information when undertaking an inventive step analysis, b.) the inventive step test otherwise substantively remains unchanged, and c.) the inventive step test continues to take account of whether the PSA would have (i) understood and (ii) appreciated the relevance of the prior art to the problem the invention was seeking to solve (i.e. regarded as relevant) and (iii) whether it would be considered a worthy starting point for further investigation or development.
This appears to be the approach likely to be taken up by the Federal Court going forwards. In Boehringer Ingelheim Animal Health USA Inc v Zoetis Services LLC, on appeal from an opposition decision, Rofe J noted that although the skilled reader is assumed to have been in possession of, and read and understood, the contents of the prior art, that does not mean that all prior art will be considered equally interesting. The skilled reader comes to the prior art without any preconceptions and, in particular, without any expectation that it offers a solution to any problem. They are assumed to have read it with interest, but is not assumed or compelled to use any information contained within it and, when that information is considered together with the CGK, may well disregard it or consider that it adds nothing of significance to it.
In this respect, the extent to which a particular prior art document would be considered “relevant” to a particular technical problem appears to remain part of the overall assessment of whether the invention was obvious in light of such prior art.
There is only a fleeting reference in the Examiner’s Manual on this topic, which simply notes that:
“While the information available for assessing inventive step has broadened following the Raising the Bar Act 2012 amendments, the test is still applied in the context of what the skilled person would have known and done before the priority date of the claim. The inventive step test will continue to take account of the nature and relevance of the prior art in the context of the problem the invention was seeking to solve.”
This approach has also been confirmed in James Hardie Technology Limited v Etex Services NV.
Interestingly, the guidance in the Examiner’s Manual on “understood” and “regarded as relevant” has been relegated to Chapter 8 “Superseded Legislation”. This might well be considered appropriate given that these matters will likely take on a somewhat different complexion in the context of s 7(3) post-RTB. Nevertheless, it is apparent from the foregoing that “understood” and “regarded as relevant” should not be forgotten entirely when considering inventive step, and therefore when formulating a response to an inventive step rejection.
Documents “understood” and “regarded as relevant”
To the extent that arguments might previously have been made that a prior art document could not be literally understood e.g., because it was in a foreign language, it appears likely that these matters will hold less weight post-RTB since they relate more to an aspect of “being seized” of the prior art. In accordance with Zoetis it seems likely these matters will be assumed. However, questions may still arise where, for example, (a) a prior document is allegedly ambiguous, such that the PSA cannot understand it; or (b) the technical level of the prior art document is too high to be understood by the PSA.
As to relevance, arguments are likely to closely aligned to matters already routinely considered as part of an obviousness inquiry, such as the extent to which a prior art provides a technically convincing pointer to the invention in its whole context. Where a document lies in an art remote from that of the problem solved by the invention, its relevance may also be open to question. However the relevance ‘criteria’ is also worthwhile reminder that the PSA need not be assumed to follow the directions of the prior art, if there are reasons that they would not do so, for example where supporting data is questionable or where the CGK leads indomitably in another direction, provided the guidance of the High Court in AstraZeneca is kept in mind, that is, that individual prior art documents are not to be ‘played off against each other’ to determine which would be considered a preferable approach. Each prior art document must be considered separately, to determine the likely steps the PSA would take with that document in hand, without reference to whether the approach in a different prior art document would be preferred. In that regard, the relevance ascribed to a particular prior art document is to be considered only within the confines of its own contents and the CGK.
What does this mean for patent applicants?
When facing inventive step rejections over a key prior art document, it is worth considering whether the PSA would have understood the document, the relevance of the prior art to the problem the invention was seeking to solve, and whether it would be considered a worthy starting point for further investigation or development. In particular, there remain grounds to argue that obviousness has not been established where the prior art in question is ambiguous, or the technical content is too high to be understood by the PSA, and where a document lies in an art remote from that of the problem solved by the invention. Considering these matters could very well tip the balance of probabilities in the applicant’s favour, and go at least part way in overcoming an inventive step rejection.
When prosecuting patent applications obtaining advice from an experienced practitioner is critical. At Spruson & Ferguson, we have a number of highly experienced attorneys who can assist in prosecuting your patent applications.
 Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 IPR 257
  FCA 1119
 Examiner’s Manual at 22.214.171.124 “Information against which inventive step is assessed”
  APO 66 at 
 Proctor v Flo-Con, 4 IPR 187 at page 198
 AstraZeneca AB v Apotex Pty Ltd; AstraZeneca AB v Watson Pharma Pty Ltd; AstraZeneca AB v Ascent Pharma Pty Ltd  HCA 30