Case: Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411
Outcome: applied
terms of s 100(1)(e) of the 1952 Act did not permit recourse to the type of information covered by s 7(3) of the 1990 Act (see Aktiebolaget Hassle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 at [15] [16] (pp 421 422). Those terms restricted the analysis to a consideration of the common general knowledge before the priority date. The standard for the assessment of obviousness or inventive step was not otherwise different. In the present case, Garth Living and Hotpoint relied upon the HECLA heater and other patents "... for the purposes of s 7(3) of the Act ...". It is clear that, at least to some extent, those parties are relying upon s 7(3) of the 1990 Act in support of this ground of revocation. They seek to rely upon information which did not form part of the common general knowledge but which could potentially be taken into account under s 7(3). In my judgment, they are not permitted to do so for the reason which I have noted at [132] above. Even if the prior art relied upon by Garth Living and Hotpoint could be taken into account, there is no evidence that would justify a finding that the claimed invention was obvious in light of that prior art. The evidence tendered by Garth Living and Hotpoint falls well short of the test expounded in Aktiebolaget Hassle [2002] HCA 59 ; 212 CLR 411 at [53] [54] (pp 433 434) where Gleeson CJ, Gaudron, Gummow and Hayne JJ in their joint judgment, after addressing the question of whether or not the experiments were part of the asserted inventive step or simply of a routine character which would inevitably have been attempted as a matter of course, said (at [53] [54] (pp 433 434)): That way of approaching the matter has an affinity with the reformulation of the "Cripps question" by Graham J in Olin Mathieson Chemical Corporation v Biorex Laboratories Ltd [[1970] RPC 157]. This Court had been referred to Olin in the argument in Wellcome Foundation [(1981) [1981] HCA 12 ; 148 CLR 262 at 267. See also Washex Machinery Corporation v Roy Burton &amp; Co Pty Ltd (1974) 49 ALJR 12 at 16]. Graham J had posed the question [ Olin Mathieson [1970] RPC 157 at 187-188. The approach taken in Olin appears now to be disfavoured by the English Court of Appeal: Pharmacia Corporation v Merck &amp; Co Inc [2002] RPC 775 at 819-820, but it still has support in the English profession: Cole, "Inventive Step: Meaning of the EPO Problem and Solution Approach, and Implications for the United Kingdom -- Part II" [1998] European Intellectual Property Review 267 , at p 270]: "Would the notional research group at the relevant date, in all the circumstances, which include a knowledge of all the relevant prior art and of the facts of the nature and success of chlorpromazine, directly be led as a matter of course to try the CF3 substitution in the '2' position in place of the C1 atom in chlorpromazine or in any other body which, apart from the CF3 substitution, has the other characteristics of the formula of claim 1, in the expectation that it might well produce a useful alternative to or better drug than chlorpromazine or a body useful for any other purpose?" (Emphasis added.) That approach should be accepted. The reasoning of the primary judge Lehane J did not treat "routine" in that way. He erred by giving it an operation more favourable to Alphapharm's case. What his Honour did was in line with the position which now apparently obtains in England, that "all of the courses of action which present themselves without the exercise of invention are obvious" [ Pharmacia Corporation v Merck &amp; Co Inc [2002] RPC 775 at 818]. His Honour did not assess what was said by the expert witnesses concerning the procedures they would have followed by making findings whether they would have been led directly as a matter of course to pursue one avenue in the expectation that it might well produce the claimed compound. This ground of revocation has not been made out. Fair Basis Section 40(3) of the 1990 Act requires that the claims of the Patent be fairly based on the matter described in the specification. This is substantially the same requirement as was laid down by s 40 of the 1952 Act.