07 March 2013

Inventive Steps

Two patent decisions in the Federal Court …

In Dynamite Games Pty Ltd v Aruze Gaming Australia Pty Ltd [2013] FCA 163 the Court has revoked two patents registered to Dynamite Games, a developer of gaming products. The Court found that the patents, for specifications that provided a guaranteed event of benefit to players within set amount of game play, lacked the requisite inventive step.

In Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165 Nicholas J has upheld an appeal by the patentee against the Commissioner's decision of 21 July 2011 - reported as Re Delnorth Pty Ltd (2011) 93 IPR 326 - to revoke several claims of Australian standard patent No 2004249786.  That patent involves an invention relating to "roadside posts for supporting signage or delineating paths, roadways or boundaries", with claim one describing the post as "comprising an elongate body formed of sheet spring steel and having a longitudinal axis, a front face and a rear face, wherein: said body is elastically bendable through 90 degrees from an unbent state about a transverse axis transverse to said longitudinal axis, said front and rear faces transversely extending generally parallel to said transverse axis".

Under s 101(4) of the Act the Court is required to exercise de novo the power conferred on the Commissioner to revoke a standard patent on the grounds that, when compared with the prior art base as it existed before the priority date, it was not novel or it did not involve an inventive step. The Commissioner's decision to revoke the relevant claims of the Patent was preceded by two re-examination reports (in July and November 2010). The patentee responded only to the first report but applied to make amendments to the claims which were allowed. The Commissioner decided to revoke various claims, notwithstanding the amendments, with claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 on the ground that none of them involve an inventive step.

Nicholas J indicates that "The question for decision is whether, on the evidence now before me, any of the relevant claims should be revoked on the ground that it did not involve an inventive step as at the priority date of 23 June 2003", going on to consider evidence prior to a conclusion that "In my view the evidence does not justify a finding that any of the claims which were revoked by the delegate is invalid. Accordingly, the decision of the delegate under s 101(1) of the Act to revoke claims 1 to 10, 13 to 21, 24 to 28, 32 and 36 of Australian Patent No 2004249786 should be set aside".