Austlii (High Court of Australia) Patents – Revocation – Obviousness or lack of inventive step – Patent for an oral pharmaceutical preparation – Whether invention obvious and did not involve an inventive step having regard to what was known or used in Australia on or before priority date – Combination of integers – Preparation arrived at by group of pharmaceutical chemists after period of experimental research – Whether hypothetical non-inventive worker in the field would have been led directly as a matter of course to pursue one avenue in expectation that it might well produce claimed invention – Relevance of publications discoverable by ‘routine literature search’ but not found to have been part of the common general knowledge in Australia at the priority date – Whether invention obvious if it was apparent to a non-inventive skilled worker that it would be ‘worthwhile to try’ each of the integers that was ultimately successfully used – Relevance of attempts to replicate the process of invention by a skilled person aware of the desired result – Whether attempts futile.
Appeal – Whether decision of primary judge in respect of obviousness affected by legal error – Where conclusions of primary judge affirmed by Full Court of the Federal Court.
Kirby J said: ‘The conclusions on obviousness in the proceedings below represented the outcome of a judicial evaluation of a mass of evidence. In the assessment of that evidence, and in the conclusion to be derived from it, the primary judge and the Full Court were better placed to perform the function of fact-finding than this Court is. Unless some error is shown in the application of the relevant law, it would be a rare step for this Court to condescend to re-evaluate such a factual conclusion, reached by concurrent decisions at two levels of the judicial hierarchy.’
After quoting from Biogen, he said: ‘Any exposition of judicial reasons explaining such factual findings is ‘inherently an incomplete statement of the impression which was made upon [the judge] by the primary evidence.’ Judges having replaced juries in such matters in Australia, and having entangled themselves in a web of horrible verbal formulae, must do their best to explain their conclusions where, in the past, juries simply announced their verdicts.’
Gaudron, Mchugh, Gummow, Kirby, Hayne and Callinan JJ
 212 CLR 411,  HCA 59, (2002) 194 ALR 485, (2002) 77 ALJR 398,  AIPC 91-838, (2002) 56 IPR 129
Cited – Human Genome Sciences Inc v Eli Lilly and Company SC 2-Nov-2011
The court considered an appeal against the declaration of invalidity of a biomedical patent for a new human protein on the grounds that it was not susceptible of industrial application.
Held: The patentee’s appeal succeeded. The court had to . .
Lists of cited by and citing cases may be incomplete.
Updated: 04 May 2022; Ref: scu.450170