Surface Miners: How Obvious is Obvious Enough?

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Do you routinely search patent specifications?  If not, the recent decision in Vermeer Manufacturing Company v Wirtgen GmbH[2015] APO 14 suggests that you should.

Surface miners, such as those employed in the resurfacing of roads and in the mining of coal and friable iron ores, have been the subject of a recent decision of a Delegate of the Commissioner of Patents, see  Surface miners typically employ a rotating drum that has an array of teeth or picks provided on it that engage with and dig up or disturb the surface in use.  The picks need to be monitored for wear and damage, and need to be replaced from time to time.  This monitoring presents a cost to the operators that is best minimised, although it is to be balanced against the poor performance of worn and damaged picks.

The Patents Act 1990 provides that certain documents are relevant when considering whether a claimed invention is ‘inventive’.  That is, a document can be considered together with ‘common general knowledge’ (the sort of information that most workers in a field of technology or endeavour typically have to hand, whether it be in their head or in readily available and universally accepted form) and be used to have a claim held obvious (lacking an inventive step).  To be relevant, the document must be one that the relevantly skilled person would have ascertained, understood and regarded as relevant to the problem that is being solved.

The Delegate has held, amongst other things, that it wasn’t necessary for a party opposing the grant of a patent to put on evidence of a specific search strategy that would have located a document of interest.  Previously, it has been considered necessary to put on evidence to the effect that the specific patent search strategy would locate a specific document on the basis of the records searched as at a specific date, being the priority date of the patent/application in question.  However, in this recent decision evidence of the typical practise of having patent attorneys conduct patent searches for newly developed products has been held to be sufficient, along with an observation that the title of the document would lead the searcher to conclude that it was relevant to the problem at issue.  To my mind this constitutes a fairly low hurdle for an opponent wishing to prevent the grant of a patent to overcome.

So, this decision is good news for those who have an interest in preventing a competitor being granted patents that might prevent them doing certain things.  However, you do need to be able to demonstrate that you routinely review patents, and perhaps other literature, when developing new products.  You will be more likely to be able to demonstrate this if you have a standing order with your patent attorneys to conduct relevant searching.