Christopher Gary Parmenter [2011] APO 26 (28 April 2011)
Sometimes the oddest cases have the biggest impact.
The present case relates to “A Method of Cultivating Plants”. More specifically, it relates to a method of harvesting plants, particularly cannabis, during the lunar apogee (for those who are curious, this is the time at which the moon is most distant from the earth).
The APO accepted the patent application and then unilaterally decided to initiate a re-examination based upon “a routine quality review”.
In the re-examination, the APO rejected all claims and relied upon the grounds of lack of novelty and lack of inventive step. The inventive step rejection was made and sustained in the absence of any evidence from experts regarding factual matters such as, for example, the state of the common general knowledge in the art at the priority date.
The applicant argued that this was contrary to the strong statements of Lindgren J in the trial decision in the Emperor Sports case (Emperor Sports v The Commissioner of Patents [2005] FCA 996) prohibiting “speculation” on the part of the APO regarding matters of fact.
The APO rejected this argument and relied on paragraphs 23 & 24 of the appeal decision in the Emperor Sports case (Commissioner of Patents v Emperor Sports Pty Ltd [2006] FCAFC 26)) which the APO says overturned Lindgren J on this point. The paragraphs in question say that the “Commissioner can draw legitimate inferences…that may be rationally drawn from technical knowledge”. The APO has latched onto this part of the appeal judgment as empowering them to make (and maintain) inventive step rejections without supporting evidence regarding the underpinning factual matters.
We now have a situation in which the APO adopts a very different approach in ex parte matters (i.e. exam and re-exam) as opposed to inter parte matters (i.e. opposition). On the above approach, an examiner can potentially maintain an inventive step rejection in the absence of any factual evidence. However, an opponent cannot make the same case without strong supporting evidence from skilled persons.
The APO feels that the rationale for the different standards applied in exam and opposition resides in the fact that, during exam, the onus lies with the applicant to satisfy the Commissioner of the validity of the claim whereas, during opposition, the onus shifts to the opponent to make out their case for invalidity.
Enjoy – but don’t inhale!
http://www.austlii.edu.au/au/cases/cth/APO/2011/26.html
regards, Bill
PIZZEYS
