The Full Court of the Australian Federal Court recently took an expansive view of the bounds of obviousness in a lengthy decision on the Viagra patent litigation between Pfizer and Eli Lilly (Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224).

A core obviousness issue considered was what information can be imputed to the person of ordinary skill in the field. The Court accepted that the hypothetical skilled person could comprise a research team or group, members of which "can be expected to carry out literature searches using relevant contemporary search facilities including online databases".

Given that US, PCT, European and Japanese patent applications have been readily available online in Australia for some time, it is likely that potential infringers will be able to fully utilise these databases in counterclaims for revocation on the basis of obviousness, imputing knowledge of prior art from these vast libraries to the skilled person in the field. Thus, Australia is likely to be drawn closer to the European position on obviousness.

In a second expansion, the Court was quite prepared to have "regard to the expert witnesses from outside Australia as proxies for people who worked in the relevant field in Australia" in determining the make-up of the hypothetical skilled addressee. Hence, the Court did not have to rely on evidence from Australian researchers specialised in the field to determine the particular characteristics of the hypothetical skilled addressee. This again would have made it easier for the alleged infringer to establish obviousness.

However, the Full Federal Court appeal court did not find the relevant claim to have been obvious in this case. In its conclusions on the issue, the Court reflected on a general critique of the obviousness requirement, quoting, with implicit approval, a recent essay of Mr Justice Hugh Laddie, where he noted: "It has been said that patents are not granted simply for coming first in the race to achieve an obvious product or process. Yet in many cases, absent the commercial incentive of a patent, there will be no race at all."

The case also alleviated a concern that had arisen in the patent profession in Australia when the trial judge found the "best mode" requirement was to be assessed as at the date of grant of the patent. The Full Federal Court put those concerns to rest, clearly stating that this requirement is determined as at the filing date. The unpalatable prospect of having to chase inventors for updates to their inventions between filing and grant has therefore hopefully passed.

Peter Treloar