2.5.2.5A Prior Art Information

Note: The information in this part only applies to standard patent applications with an examination request filed on or after 15 April 2013.  For all other standard patent applications, see 2.5.2.5 Could the Person Skilled in the Art be Reasonably Expected to Have Ascertained, Understood, Regarded as Relevant and, Where Applicable, Combined the Prior Art Information?  

Under sec 7(3), the prior art information used for an inventive step objection may be either:

a. any single piece of prior art information; or

b. a combination of any 2 or more pieces of prior art information that the skilled person could, before the priority date of the relevant claim, be reasonably expected to have combined.

Examiners should note that the prior art information includes not only documents, but also information publicly available through doing an act (including a prior use).

In considering inventive step, examiners should proceed on the basis that the person skilled in the art is essentially deemed to be aware of and to have carefully read the publicly available information.

Arguments that an inventive step objection should not have been taken because the information relied upon would not have been discovered by the person skilled in the art are not to be accepted.  There is no requirement to establish that a skilled person would have found the information. Thus, if the information relied upon was made public anywhere in the world, in any language, at any time before the priority date, it is prima facie available for use.

As was noted by Laddie J in Pfizer Ltd’s Patent [2001] FSR 16:

“A real worker in the field may never look at a piece of prior art for example he may never look at the contents of a particular public library or he may be put off because it is in a language he does not know. But the notional addressee is taken to have done so. This is a reflection of part of the policy underlying the law of obviousness. Anything which is obvious over what is available to the public cannot subsequently be the subject of valid patent protection even if, in practice, few would have bothered looking through the prior art or would have found the particular items relied on.”

Where there are multiple pieces of prior art information, each must be considered individually to determine whether the invention is obvious.  The fact that the skilled addressee is faced with a choice of documents, the selection of any one of which may or may not lead to the claimed invention, is not important.  Provided the invention is obvious in the light of any one of the pieces of prior art information, there will be a lack of inventive step (AstraZeneca AB v Apotex Pty Ltd [2015] HCA 30; 89 ALJR 798 at [113]-[115]).