Evidentiary Requirements

Date Published

In the decision of Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; 67 IPR 488, the requirement for evidentiary proof as to the nature and knowledge of the person skilled in the art was considered:

“In considering who is the appropriate skilled person, and what such person might be reasonably expected to do when faced with the problem in hand, sometimes, indeed often, evidence may not be necessary.  In many instances the answers will be obvious to the parties, the Commissioner and the court.  In high technology areas for example it will usually be assumed that the relevant skilled person will be familiar with the major professional or academic journals and could reasonably be expected to consult them.  No evidence is required.”

In situations where there may be doubt or disagreement, it was noted that:

“…it is necessary to have either evidence or, which amounts to the same thing, reliance by an administrative decision-maker of expertise appropriate to the office.”

and furthermore:

“The Commissioner is an administrative decision-maker equipped with technical expertise. ….. he or she is entitled to make use of that expertise, and draw inferences that may be rationally drawn from technical knowledge, including how skilled persons of various descriptions may act in their respective occupations ….”

In these circumstances, the knowledge of the Commissioner is prima facie to be relied upon by the Office as evidence as to what the person skilled in the art would do.