Patents B: Validity

TOC \o "1-3" \h \z \u 9Patents B: Validity PAGEREF _Toc453252539 \h 1
9.1Is it novel? PAGEREF _Toc453252540 \h 1
9.1.1Terminology PAGEREF _Toc453252541 \h 1
9.1.2Anticipation in general PAGEREF _Toc453252542 \h 1
9.1.3Mosaics (collections of documents constituting the prior art base) PAGEREF _Toc453252543 \h 2
9.1.4Made publicly available - documents and acts PAGEREF _Toc453252544 \h 2
9.1.5EXAM: anticipation example (killing cockroaches) PAGEREF _Toc453252545 \h 2
9.1.6Prior use that does not affect novelty PAGEREF _Toc453252546 \h 3
9.2Is it an inventive step? - Obviousness PAGEREF _Toc453252547 \h 3
9.2.1The hypothetical person skilled in the art PAGEREF _Toc453252548 \h 4
9.2.2The relevant prior art knowledge base PAGEREF _Toc453252549 \h 4
9.2.3Obviousness question summary PAGEREF _Toc453252550 \h 5
9.2.4Prior publications which will not affect inventiveness PAGEREF _Toc453252551 \h 5
9.3Is it useful? PAGEREF _Toc453252552 \h 5
9.4Has it been secretly used by the patentee? PAGEREF _Toc453252553 \h 6
9.4.1Exceptions to secret use PAGEREF _Toc453252554 \h 6
9.5Other requirements PAGEREF _Toc453252555 \h 6
9.5.1Problems with claims and specifications PAGEREF _Toc453252556 \h 6
9.5.2Misrepresentation PAGEREF _Toc453252557 \h 7

Registration is not proof of validity - s 20
Is it novel?
Section 18 requires that a patent, when compared with the prior art base as it existed before the priority date, be novel (as well as involving an inventive step - dealt with later). Section 18 refers to s 7, which outlines what constitutes the ‘prior art base' (documents).

A patent will not be novel if it is anticipated by a prior invention.
Terminology
Anticipation: a reference to a lack of novelty (the invention has already been anticipated). You need to follow the tests for novelty to see if an invention was already anticipated
Obviousness: Follow the novelty tests
Integers: Integers are features of the invention. There are essential and inessential integers.
Workshop variations/workshop adjustments/workshop improvements/variants: changes to an ‘invention' that do not involve an inventive step.
No subject matter: where nothing has been invented/there is no inventive step
Combination patents: Patents for inventions which are comprised of integers, some or all of which are known but when combined produce a new and better result through their interaction.
Mere collocation of known integers: Like a combination patent, but where the integers do not interact to produce a new and better result and is therefore invalid.
Anticipation in general
Advanced Building Systems Pty Ltd v Ramset Fasteners (Aust) Pty Ltd (1993) 26 IPR 171
For a document to be an anticipation of a subsequent invention, what must be found in it?
That the information as to the alleged invention given by the prior publication was, for the purposes of practical utility, equal to that given by the subsequent patent. If specific details are necessary for the practical working and real utility of the alleged invention, they must be found substantially in the prior publication.

What must be taken into account when a possible documentary anticipation is being construed?
The earlier publication must be interpreted as at the date of its publication, having regard to the relevant surrounding circumstances, but without regard to subsequent events.

When a document or patent is being construed, what type of hypothetical person's judgment is taken as the benchmark?
A reader skilled in the art to which the invention relates, having regard to the relevant state of knowledge at the relevant date.

What sort of link is made in this case between infringement of a patent and anticipation of an invention?
Anticipation will be shown where carrying out the directions contained in the prior publication inevitably results in something which would infringe the subsequent patent.

Does the claimed new invention have to be totally disclosed by the prior publication in order to have been anticipated?
No, only the essential features must be disclosed by the prior publication.
Mosaics (collections of documents constituting the prior art base)
Look at s 7(1). For more than one document to be considered together to form the prior art base, they must be related and the relationship must be such that a person skilled in the relevant art would treat them as a single source of that information.
Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 16 IPR 545
The allegation of invalidity was based on the specifications of three US patents (as well as disclosures through alleged prior use), none of which alone disclosed the invention. Was there sufficient cross referencing