The detriments of hindsight: the evidentiary burden of inventive step under Australian patent law

There you are:  Professor David A. (for Absurd) Pomposity III, one of the world’s finest immunologists and proud academic.  Dressed in a shabby sportscoat with leather patched elbows you look innocuous enough, yet, in the rarefied academic atmosphere in which you reside, you are an apex predator, a great white shark, respected and feared by all you survey from your ivory tower.  A Nobel prize no doubt awaits you.  And you are happily married too!  Living on the campus of UCSF with your famous scientist wife and two happily well-adjusted kids, life is going swimmingly.

“What’s on today, Davey?”, your wife asks as you both head to the door after breakfast.  “Oh, the usual love.  Meeting with my scientific team, a discussion with the US Presidential coronavirus task-force…and something a little unusual…I have been retained as an expert witness on an Australian patent opposition for a patent dated back in 2007, should be a doddle.”

You’ve provided expert evidence on European oppositions before, too easy.  Just putting your signature on the meaning of a few definitions at the time the patent was filed, like “immunology” and “disease”.  The Australian one should be similar, something about inventive step?  But they wouldn’t tell you what the case was about, wouldn’t let you see the patent…

You cross the road jauntily, elbow patches shimmering in the sunlight, and then….the screech of a big black van coming around the corner, the door slamming open, two burly men grab you and the last thing you see is a masked face gently pressing a chloroform soaked cotton pad over your face…

You wake up in a hard chair in a small room, with a one-way mirror along one wall.  A calendar is on the wall, a 2007 calendar?, your phone is gone and in the background the song “Umbrella” by Rihanna is playing (hang on, wasn’t that the number 2 song of 2007)!

“Hello” says a deep sonorous voice from behind the one-way mirror.  “We are the legal team who retained you as an expert witness for the Australian patent case.  It’s a 2007 case so you can only use knowledge from 2007 or before.”

“Right”, you say.  “Well, what’s the patent about?  Can I see it?”

“No, that would be leading the witness.  We can’t have any hindsight bias, not the done thing.  Might compromise our case.”

“So, what can you tell me?”

“Not much, I am afraid.  Can’t lead you, you know.”

“Um, ok, what do you need to know.”

“That’s a hard one – can’t be too direct.  Why don’t you start by telling us what was known about immunology in 2007.  And I mean everything.  But not from your personal experience – what would the ordinary person who was skilled in the art have known.  Once we have that nailed down, we will show a few documents to get your interpretation of them and, hopefully, you’ll come up with comments that render the patent claims lacking in inventive step!”

“Do I ever get to see the patent!”

“Maybe, eventually…”

“But I always saw it in European patent oppositions.  Isn’t that the point”

“Ah Europe, yes, riddled with hindsight their system!  We will never cut corners like that in Australia!”

“Isn’t this just a complete waste of time?  Doesn’t the European system work perfectly well.”

“Not from our perspective.  Anyway, let’s start with the questions again.”

“How long will this take?!”

“Hmm, well, months and months.”

“When do I get to see my family?’

“Yes, well, the kids were born after 2007.  Can’t have you seeing things in the future, you see.  Might contaminate your evidence…”

And suddenly you feel, very small, very cold and very alone.


Horrific!  Yes.  Dystopian!  Yes.  Exaggerated – a little, but for anyone involved in preparing inventive step evidence for cases before the courts or before the Australian patent office, this little vignette carries the ring of truth.  The preparation of this evidence, and all the attendant pussy footing around to avoid hindsight contamination, is arduous and expensive.  From experience, it is a significant proportion of the cost of any patent proceeding.   And where does it get you?  Not very far. It is incredibly difficult to invalidate a patent for inventive step in Australia when compared to other jurisdictions such as the US and Europe.  It is like every factor – both evidentiary and legally – conspires against establishing this ground of attack.

In any case, the approach taken to inventive step in Australia is bemusing and befuddling to practitioners in almost every other jurisdiction in the world…

What can be done?  Well we have had amendment after amendment made to the Australian Patents Act and none have been particularly successful.

I might come back to this at some stage, as inventive step (as with the innovation patent) has been a personal bugbear for me for many years.  And I do have a few thoughts.  It’s just that I am so outraged they might not come out as clearly as I intend.  Let’s wait until I calm down.

Till we meet again!

Share this post
Share on facebook
Share on twitter
Share on linkedin

Leave a Comment

Your email address will not be published. Required fields are marked *

Scroll to Top