3rd July 2009
Common general knowledge fades into the background
The Full Federal Court decision in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81, while largely affirming the decision of the trial judge reported here does provide some further elucidation of the manner in which the test for innovative step is to be applied.
The appellant, Dura-Post argued that in assessing the question of innovative step pursuant to s 7(4), and in particular whether any variation between the invention and the prior art made a substantial contribution to the working of the invention, it was first necessary to identify the advance in the art or “key idea” of the invention. Dura-Post further submitted that:
The Full Court rejected this approach finding that the “invention” referred to in s 7(4) was to be understood in light of the wording of s 18(1A) which refers to the “invention, so far as claimed in any claim”. Accordingly:
Section 7(4) requires a comparison to be made between the invention as claimed in each claim with the information s 7(5) describes. … In making this comparison, s 7(4) requires that each comparison be made from the perspective of a person skilled in the art, whose task is to identify and assess the variations between the invention as claimed in each claim and the prior disclosure and determine whether or not these variations make a substantial contribution to the working of the invention as claimed in each claim.
The Court considered that the required comparison is a functional inquiry between the invention as claimed and the prior disclosure to assess whether the variation contributes substantially to the way in which the invention as claimed functions. The Court also noted that:
The place of common general knowledge in this provision is straightforward enough. Section 7(4) contemplates that, in performing this task, a person skilled in the art has certain background knowledge that that person uses in identifying and assessing these variations.
Accordingly, while the inquiry as to substantial contribution is made from the perspective of the skilled addressee in light of the common general knowledge, it appears that it is not relevant whether any variation forms part of that common general knowledge, provided that it makes the required substantial contribution.
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