2.5.2.5.2 Understood

Date Published

Note: The information in this part only applies to standard patent applications with an examination request filed before 15 April 2013.  For standard patent applications with an examination request filed on or after 15 April 2013, the requirement that the prior art information be ascertained, understood and regarded as relevant by the person skilled in the art does not apply.

Unless there are unusual circumstances, examiners should generally proceed on the basis that a person skilled in the art could be reasonably expected to have understood the prior art information. There should be little doubt of this when, for example, the information relates to the same art (see the passage from Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited [1997] APO 40 appearing in 2.5.2.5.1 Ascertained).

The question of whether the person skilled in the art could be reasonably expected to have understood particular information in a document will arise where:

  • a prior document is allegedly ambiguous, such that the person skilled in the art cannot understand it; or

  • the technical level of the prior art document is too high to be understood by the person skilled in the art.

The issue may also arise where the document is in a foreign language. However, in most cases this will not be a problem. For example, in Heating Elements Ltd. (1978) IPD 169, a Japanese utility model was not excluded because of language difficulty. In the first instance, examiners should not exclude a document on the basis of language.

The applicant may provide a well-reasoned argument of why the person skilled in the art could not be reasonably expected to be familiar with the language of the document. Such arguments should be considered on their merits (see 2.13.5.2 Balance of Probabilities).