In Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 IPR 257 the word "ascertained" was interpreted by the Federal Court as meaning "discovered" or "found".

Generally speaking, it should be considered that a document dealing with the same technical issues would have been ascertained. In Rohm and Haas Company v Nippon Kayaku Kabushiki Kaisha and Sankyo Company, Limited [1997] APO 40 it was stated:

"A document would be ascertained if it was published in such a manner or form that it could reasonably have been expected to be found by a person skilled in the art. A patent document dealing with the same technical issues would prima facie have been ascertained by a person skilled in the art. The requirements of understood and regarded as relevant are not likely to be an issue where a document relates to the same art as the problem."

In the decision of Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd (supra, paragraphs 183-196), the court applied the "diligent searcher" test in determining whether a document was part of the prior art base for obviousness, as outlined in the UK decision of Technograph Printed Circuits Limited v Mills and Rockley (Electronics) Limited [1972] RPC 346 at 355:

"... there may be documents which, although available, would never be looked at by anyone making such a search as our hypothetical addressee is supposed to have made. Attention was drawn to the fact that both heads (e) (novelty) and (f) (obviousness) in section 32 contain the words `having regard to what was known or used ... in the United Kingdom'. I doubt whether they were intended to mean the same in each case. If they were there would now be little, if any, difference between novelty and obviousness. Obviousness would cover practically every case of lack of novelty. In head (e) these words are used in an artificial sense and are held to include matter which in fact no-one in the United Kingdom ever knew or was likely to know, such as the contents of some foreign specifications which no-one had ever looked at and which the most diligent searcher would probably miss. I think that in head (f) the words should have the more natural meaning of what was or ought to have been known to a diligent searcher."

The court expressed the view that this distinction between the respective prior art bases for novelty and inventive step was reflected in the words of s7(3).

In order to assess whether a diligent searcher could have been reasonably expected to have ascertained a particular document, it is important to have regard to the context of the problem that the diligent searcher would have been investigating.

Examiners should generally proceed on the basis that it could be reasonably expected that the person skilled in the art would conduct a search of the patent literature, including the patent specifications of major countries and that, apart from the exceptions below, any patent document located in a patentability search would reasonably be expected to be ascertained by the person skilled in the art.

In Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26; 67 IPR 488, the Full Court affirmed the general correctness of the above practice. However, it also noted that this may not be universally applicable and there may be situations where it would not be reasonable to have such an expectation.

Exceptions

Exceptions to the general principle set out above may arise where:

the patent document is in a location that makes it unlikely that the person skilled in the art would come across it, such as in B.C.D. Mecanique Ltee v Madness Gaming Products, Inc. [2001] APO 70 where a patent specification which was in the files of the Dominican Republic Patent Department was found to be not ascertainable;
the relevant technology is one in which it could not be reasonably expected that a person skilled in the art would consult patent literature, such as in Commissioner of Patents v Emperor Sports Pty Ltd where it was considered that a Rugby League or Australian Rules coach, referee, umpire or administrator would not have conducted a search in the United States Patent Office; and
the person skilled in the art could not be reasonably expected to find the information in the document. Thus, for example, an obscure statement in a large document may not be ascertained if the bulk of the document is not relevant to the problem.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023

8.5.7.1 Ascertained

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Amended Reasons