Subsections 7(2) and 7(3) govern the types of information which can be used for an assessment of inventive step and how the information can be used. The information must have been available before the priority date of the claim and includes:

common general knowledge (see 5.5.2.3 The common general knowledge and 5.6.6.4 Assessment of Inventive Step); and
publicly available prior art (see 5.6.4.1 Prior Art - What is Included (Definition From the Act, Publicly Available, Exclusions, Grace Period)).

The amendments brought about by the Raising the Bar Act 2012 made the following information available for assessing inventive step:

common general knowledge which is known to all workers in the relevant art in every part of the world; and
any document or use which was publicly available anywhere in the world.

The common general knowledge may be considered together with:

A single piece of prior art information; or
A combination of two or more pieces of prior art information, provided that the skilled person could, before the priority date of the claim, be reasonably expected to have combined them.

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.

When assessing for inventive step, it is important that the benefits of hindsight are avoided.

To whom is the claimed invention obvious?

Subsection 7(2) of the Act makes it clear the claimed invention is to be shown to be obvious to the person skilled in the art (PSA). It is also the PSA who determines whether pieces of prior art mentioned in subsection 7(3) can reasonably be expected to be combined. The concept of the PSA is discussed in 5.5.2.2 The Addressee (identifying the skilled person).

Could the PSA be reasonably expected to have combined the prior art information?

The combining of prior art information (for example, documents or information made publicly available through doing an act, including a prior use) is often referred to as "mosaicking".

It is permissible to make a 'mosaic' out of the relevant documents, but it must be a 'mosaic' which can be put together by an unimaginative person with no inventive capacity (Technograph Printed Circuits Limited v Mills and Rockley (Electronics) Limited (1972) RPC 346).

In determining whether the PSA could be reasonably expected to have combined two or more distinct pieces of information, examiners need to consider whether in light of the problem faced by the skilled person, there is a reasonable basis or motivation to combine the disclosures. The following factors can be used:

whether the nature and content of the documents are such as to make it likely or unlikely that the PSA would combine them. That is, is there some suggestion or motivation either in the references themselves, or in the knowledge generally available to the PSA, to modify the reference or to combine reference teachings with a reasonable expectation of success? Is there some expected advantage that would have been produced by the combination?;
whether the documents (or acts) come from similar, different or remote technical fields. That is, would the problem have prompted a search in those technical fields? Would the PSA have researched that technical field since the same problem was likely to have occurred in it? For example, in Dow Chemical Company (Mildner's) Patent [1973] RPC 804, an invention residing in an electrical cable in which a plastics jacket was securely bonded to a metal shield using a specified copolymer was held to be obvious in the light of one document disclosing all the features of the cable, but not the adhesive copolymer, and other documents disclosing the copolymer. Although these latter documents did not refer to cable manufacture, they did disclose the copolymer as having high moisture resistance and being suitable for bonding plastics to metal, both are essential properties for adhesives used in cables. It was therefore reasonable to expect the skilled person concerned with the problem of adhering plastics to metal in cables to have found and considered these documents; and
whether the art would have taught away from a particular solution or combination at the priority date. That is, do the disclosed features initially seem to have an inherent incompatibility? Would the combination not have been expected from a PSA? Does one piece of information have a tendency to lead away from the mosaic? Answering yes to any one of these questions would point towards the claimed combination being inventive.

Consideration should also be given to whether the skilled worker, while deemed to be aware of and to have carefully read all the documents, would have appreciated the relevance of the documents to the problem.

Enabling disclosures

For novelty, a citation is construed as at its date of publication to the exclusion of information subsequently discovered. For inventive step, the citation is construed by the person skilled in the art when trying to solve the problem (that is, at the priority date of the claims being examined). This means that for the purposes of inventive step, the disclosure of a citation may be effectively extended by having regard to subsequent common general knowledge developed in the period between the publication date of the citation and the priority date of the claim under consideration (see 5.6.4.2 Construing a citation).

If a citation provides sufficient instructions for the PSA to do that which is within the teaching of the citation to produce the solution without inventive ingenuity, this is “mere verification” of the teaching and not inventive. However, “[t]he tracing of a course of action which was complex and detailed, as well as laborious, with a good deal of trial and error, with dead ends and the retracing of steps” is inventive, since that is not the taking of routine steps (Aktiebolaget Hassle v Alphapharm Pty Ltd (2002) HCA 59 at paragraph 58).

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023
Published for testing	06 Jun 2023

5.6.6.2 Information against which inventive step is assessed

Also in this Chapter:

Key Legislation:

Related Chapters:

On this page

Overview

To whom is the claimed invention obvious?

Could the PSA be reasonably expected to have combined the prior art information?

Enabling disclosures

Amended Reasons