Thickeners – not so obvious after all

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Author: Peter Caporn

In a recent patent opposition case before a Delegate of the Commissioner of Patents a patent application by the CSIRO for a thickener (an apparatus for flocculation) with a unique feedwell design has been upheld and the opposition by Outotec Oyj denied. The full decision Outotec Oyj v Commonwealth Scientific and Industrial Research Organisation [2015] APO 78 (24 November 2015) can be accessed here.

One of the intriguing aspects of this case is that Outotec was unsuccessful in their opposition despite CSIRO not being allowed to put on any evidence answering their allegations of lack of novelty and obviousness (CSIRO were late to file evidence and were not granted an extension). None of the prior published documents relied upon by Outotec in their opposition was held to disclose all of the features of CSIRO’s thickener and feedwell. Further, despite Outotec’s expert asserting that the design of CSIRO’s feedwell was simply a matter of routine modification, the Commissioner’s Delegate determined that even were the modification just routine that needn’t make it obvious. Rather, Outotec failed to demonstrate that the skilled addressee (the non-inventive skilled person working in this field) would have “as a matter of course be led to make such a modification”. The evidence of Outotec’s expert was determined to suffer irretrievably from the “benefit of hindsight”.

What is clear from this decision is that great care must be exercised in the preparation of expert evidence in patent opposition proceedings. An invention’s necessary “Eureka moment” need not be highly technical in nature and simply having a highly qualified expert in a relevant field assert that the invention is routine is not enough. Effort must be made to ensure that sufficient support for the view is provided and that a clear path from what was known in the technical area at the priority date (the “common general knowledge”) to the claimed invention is demonstrated, together with detail as to what will have motivated the skilled addressee to move in that direction.