Case: Minnesota Mining &amp; Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253
Outcome: referred to
A threshold question of law arises. It is submitted for the patentee that, once it is accepted that clopidogrel was not part of common general knowledge in Australia, let alone the broader teachings of the French patent, the ground of lack of inventive step is misconceived and has no possibility of success. It is pointed out that the statutory phrase is "what was known or used in Australia", before the priority date. It is well-established that that phrase refers to common general knowledge in the relevant field in Australia, that is to say, "the background knowledge and experience which is available to all in the trade in considering the making of new products, or the making of improvements in old" ( Minnesota Mining &amp; Manufacturing Co v Beiersdorf (Aust) Ltd [1980] HCA 9 ; (1980) 144 CLR 253 at 292). 102 This submission was described as heretical. I, therefore, carefully reread the analysis of s 100(1)(e) of the 1952 Act by Aickin J in Minnesota Mining [1980] HCA 9 ; 144 CLR 253 , particularly at 287 295. That analysis is not directed to the question that arises here. There is no indication in that case that any of the patent specifications relied upon were cited in the patent in suit, that they had any connection with the patentee or that the patentee was aware of them. It was not a selection patent in any sense. 103 The position established in Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was of relatively short duration. Until then, the wider view of Williams J in HPM Industries Pty Ltd v Gerard Industries Ltd [1957] HCA 47 ; (1957) 98 CLR 424 had applied (see Graham Hart (1971) Pty Ltd v SW Hart &amp; Co Pty Ltd [1978] HCA 61 ; (1978) 141 CLR 305 per Aickin J at 329 330). The 1990 Act widens the prior art base, but does not change the nature of the issue. Leaving aside Aktiebolaget [2002] HCA 59 ; 212 CLR 411 , the principal survey of the topic by the High Court since Minnesota Mining [1980] HCA 9 ; 144 CLR 253 was in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd (No 2) [2007] HCA 21 ; (2007) 235 ALR 202 , (2007) 81 ALJR 1070 , particularly at [31] [66]. That case did not involve the problem that arises here. It is noteworthy that the Court said of the 1990 provisions (at [127]): "As stated above, by enlarging the prior art base through including relevant prior disclosures beyond those disclosures proven to be part of the common general knowledge, these provisions raise the threshold for inventiveness. However, the idea remains that the prior disclosures to be taken into account, even as enlarged by s 7(3), are being considered for a particular purpose. That purpose is the purpose of looking forward from the prior art base to see what a person skilled in the relevant art is likely to have done when faced with a similar problem which the patentee claims to have solved with the invention." (Emphasis added.) (cf Firebelt Pty Ltd v Brambles Australia Ltd [2002] HCA 21 ; (2002) 188 ALR 280 , (2002) 76 ALJR 816 at [33] as to combination patents.) The applicants do not seek to utilise the contents of the prior specification as an admission as to common general knowledge (cf Lockwood Security Products [2007] HCA 21 ; 235 ALR 202 , 81 ALJR 1070 at [105] [109]). Rather, it is a statement of the nature of the inventive step that is claimed (cf in another context, Commissioner of Patents v Microcell Ltd [1959] HCA 71 ; (1959) 102 CLR 232).