Australia's highest court has provided a boost to patent holders in Australia by upholding an appeal in a long-running patent dispute between rival lock makers.
Five judges of the High Court handed down their ruling in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd on May 23.
"It's a good decision for patentees," said Chris Schlicht, partner of Phillips Ormonde & Fitzpatrick Lawyers, which acted for Lockwood in the case. "The judgement reaffirms a lot of basic principles that apply in the law of inventive step and clarifies them," he added.
In its ruling the Court set out the basic legal principles relating to inventive step and obviousness. These include stating that "a scintilla of invention" is sufficient in Australian law to support the validity of a patent.
But the Court also said that admissions made in the patent specification about prior art and common general knowledge, when used as evidence, need to be considered with other evidence presented to the court, such as that given by technical experts.
The High Court clairified that the decision in the 1959 case Commissioner of Patents v Microcell "has not been properly understood; it does not involve a separate ground of invalidity or a discrete 'threshold' test".
The judges also considered the role of secondary evidence and stated: "An Australian court should be slow to ignore secondary evidence or to rely on its own assumed technical expertise to reach conclusions contrary to such evidence."
"The bar is now higher for revoking a patent on obviousness [following this decision]," said Robert Cooper, a partner with Mallesons Stephen Jacques.
Schlicht said the decision highlights the importance of getting the claim structure right when drafting a patent and that patent applicants need to have a strong fall back position on claims.
The dispute had come before the High Court for an unprecedented second time and follows seven years of litigation between the parties. It concerns patent 702534, a patent for a key controlled latch in which both the inner and the outer locks can be opened from the outside.
In October 2000 Doric alleged that it had been unjustifiably threatened with infringement by Lockwood. Lockwood cross claimed for infringement and, in a second cross claim, Doric asked for the patent to be revoked.
In December 2001 Justice Hely of the Federal Court found that the patent was invalid because the claims were not fairly based on what was set out in the specification.
Lockwood appealed to the Full Federal Court and, when it lost again in March 2003, to the High Court.
In November 2004 the High Court upheld Lockwood's appeal concerning fair basis and sent the case back to the Full Federal Court to consider the issue of inventive step.
The Full Federal Court found in December 2005 that the claims in the patent lacked an inventive step. Lockwood again appealed to the High Court.
In total seven Federal Court judges have found the patent invalid, and seven High Court judges have come to the opposite conclusion. "It's a fact of life that one tribunal will disagree with another tribunal," said Cooper.
An injunction (with immediate effect) has been issued against Doric. The case has been referred back to the Full Federal Court for it to consider the issues of costs and amendments to the patent.
Phillips Ormonde & Fitzpatrick Lawyers acted for Lockwood in the case. Spruson & Ferguson represented Doric.
