Australia's Full Federal Court has handed down a decision that could affect the way the country's patent commissioner considers questions of inventiveness in pre-grant examinations and post-grant reexaminations.

In 2003, the Australian Football League asked the Patent Office to reexamine a patent granted to Emperor Sports for velcro strips that could be attached to one player and removed by another, as if they had been successfully tacked in a game of touch football. The Commissioner of Patents decided that the strips lacked inventive step and revoked the patent. Emperor Sports appealed.

In July 2005, Justice Lindgren of the Federal Court reviewed the steps involved in a reexamination of a granted standard patent, and held that when assessing inventive step, the Commissioner needed evidence to find that certain prior art patent specifications could be "ascertained, understood and regarded as relevant" by a person skilled in the art.

The Commissioner appealed but that appeal was dismissed by the Full Federal Court on March 10. The judges ruled that the Commissioner could not assume that all persons skilled in the art could be expected to search patent literature.

"[The ruling] makes it clear that, in a lack of inventive step objection, the Commissioner and judicial authorities must first establish that a skilled person could have 'ascertained' a cited document," said Rob Wulff of Griffith Hack, which represented Emperor Sports. "It is not enough merely to assert that a skilled person had the possibility to conduct patent searches."

The judgment also said evidence may be filed to establish what a person skilled in the art might be reasonably expected to do.

The Commissioner of Patents was represented by the Australian government solicitor.