Case: Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 
Outcome: discussed
The applicants seek to sidestep this considerable obstacle by relying upon the description of the inventive step in the complete specification which makes it clear that the step was to go from the racemic mixture corresponding to the formula methyl alpha-5 (4,5,6,7-tetrahydro (3,2-c) thieno pyridyl) (2-chlorophenyl) acetate, described as derivative 1 in the French patent, to the dextro-rotatory enantiomer of that racemic mixture. The inventiveness of that step would then be judged according to Australian common general knowledge. It was submitted that this approach is consistent with that of the majority of the High Court in Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2002] HCA 59 ; (2002) 212 CLR 411 at [41] and [52] [53]. That was consistent with the way in which that case had been conducted below ( Aktiebolaget H&auml;ssle v Alphapharm Pty Ltd [2000] FCA 1303 , (2000) 51 IPR 375 at [15] [24] and [44]). 99 Aktiebolaget [2002] HCA 59 ; 212 CLR 411 provides a good example. The compound, known as omeprazole, which undoubtedly involved an inventive step, was not easily formulated into a satisfactory pharmaceutical composition, and solving a problem in the administration of the drug by formulation was required, that being the gist of the inventive step claimed in that case. Obviousness was not judged on the basis that omeprazole had not been discovered simply because it had not passed into Australian common general knowledge. By analogy in the present case, the only invention described in the specification is moving from the particular racemic compound to the dextro-rotatory enantiomer of that compound. It would be the obviousness, or otherwise, of that step which would be tested, not the obviousness of formulating clopidogrel or any of the other compounds encompassed by the French patent. 100 On this basis, the state of Australian common general knowledge would still have an important part to play in judging inventiveness. It is easy to imagine that there would be technical fields where there is little Australian common general knowledge so that, for example, what may be routine in the laboratories of Switzerland would be inventive by Australian standards. On the other hand, there may be other fields where the relevant Australian knowledge was in advance of the country where the claimed invention took place, leading to the opposite conclusion. 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).