Patents Committee Questionnaire 1 BASIS FOR DECISION Obviousness: Statutes The relevant sections of the New Zealand Patents Act 1953 when determining obviousness are Section 21 (Opposition to grant of a patent) and Section 41 (Revocation of patent by Court). There is also Section 42 (Revocation of patent by Commissioner), but this section uses the same rules as Section 21 when determining obviousness. There is no examination before acceptance for obviousness by the Intellectual Property Office of New Zealand. Section 21(e) is the particular subsection which deals with obviousness when a patent is under opposition. Section 21(e) is as follows: Opposition to grant of patent (1) At any time within the period prescribed by subsection (2) of this section any person interested may give notice to the Commissioner of opposition to the grant of the patent on any of the following grounds: (e) That the invention, so far as claimed in any claim of the complete specification, is obvious and clearly does not involve any inventive step having regard to matter published as mentioned in paragraph (b) of this subsection, or having regard to what was used in New Zealand before the priority date of the applicant's claim Section 41(f) is the particular subsection which deals with obviousness when a patent is under revocation. Section 41(f) is as follows: Revocation of patent by Court (1) Subject to the provisions of this Act, a patent may, on the application of any person interested, be revoked by the Court on any of the following grounds, that is to say, (f) That the invention, so far as claimed in any claim of the complete specification, is obvious and does not involve any inventive step having regard to what was known or used before the priority date of the claim in New Zealand From the above sections it can be seen that there are differences in law when attempting to oppose or revoke a patent under the ground of obviousness. In opposition proceedings, obviousness must be established on the basis that the invention is clearly obvious and does not involve any inventive step, and the evidence allowable in proving this obviousness is any matter published or used. Note that the matter relates to what is published or used only in New Zealand, i.e. local novelty applies.
In revocation proceedings, the invention does not have to be clearly obvious and lack an inventive step, and the matter is not limited to only that which has been published or used (can merely be known). However, as noted above, local novelty still applies. Obviousness: Case Law The higher onus on the opponent to establish obviousness was noted by Barker J in Beecham Group Ltd v Bristol-Myers Co (No 2) [1980] 1 NZLR 192 (SC). Furthermore, in Beecham Group Ltd the Court held that obviousness is to be judged from the viewpoint of a notional person who is: Skilled in the art ; and Knowledgeable in all relevant literature; but Incapable of a scintilla of invention. The test for obviousness in both opposition and revocation was established in Windsurfing International Inc v Tabur Marine (GB) Ltd [1985] RPC 59 (CA), and later confirmed in Peterson Portable Sawing Systems Ltd v Lucas [2006] 3 NZLR 721 (SCNZ). The Windsurfing test is as follows: The first [step] is to identify the inventive concept embodied in the patent in suit. Thereafter the court has to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, the common general knowledge in the art in question. The third step is to identify what, if any, differences, exist between the matter cited as being known or used and the alleged invention. Finally the court has to ask itself whether viewed without any knowledge of the alleged invention those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention. The possibility of combining documents in order to determine obviousness was stated in Ancare NZ Lytd v Cynamid of NZ Ltd [2000] 3 NZLR 299 which stated: Prior documents may be looked at together if that is what the skilled person or team would do. A. EVALUATION OF INVENTIVE STEP FOR HYPOTHETICAL CASE To decide whether or not claims 1 and 2 are obvious over the prior art documents D1 and D2 in New Zealand, the claims must be examined as if under opposition proceedings, as well as revocation proceedings, in order to take into account the differences between the grounds. Opposition The ground of obviousness under opposition takes into account only documents published before the priority date of the claim in question. As documents D1 and D2 are considered to be prior art patent documents published before the priority date of claims 1 and 2, both documents are considered relevant.
The higher threshold of obviousness under opposition requires that claims 1 and 2 be proven clearly obvious and not involving an inventive step. Claim 1 requires a seal (1), with a sealing element (3) of intumescent material, and an electrical heating means (2) arranged to heat the material to seal a gap. Claim 2 requires the seal of claim 1, a control unit, and a fire detector, the control unit activating the seal in response to a signal from the detector. The first step of the Windsurfing test is to identify the inventive concept embodied in the patent in suit. In the patent application main request, the inventive concept of claim 1 appears to be that an electrical heating means is used to heat intumescent material to seal a gap. The inventive concept of claim 2 appears to be that the system of claim 1 is activated in response to a signal from a fire detector. The second step is to assume the mantle of the normally skilled but unimaginative addressee in the art at the priority date and to impute to him what was, at that date, the common general knowledge in the art in question. The skilled person in this hypothetical case would most likely be a manufacturer/installer of fire protection seals. The common general knowledge in the art in question would likely include, as stated in the patent application main request, the use of rubber seals arranged to impede the flow of smoke through a gap in a doorway, and the use of intumescent material for sealing gaps. It is unlikely that documents D1 and D2 are common general knowledge, as patent documents are rarely well known by those outside the patent industry. This applies especially to document D2, which appears to be in a different technology area (frame fixation) than the patent application main request (fire protection sealing). The third step is to identify what, if any, differences, exist between the matter cited as being known or used and the alleged invention. The matter cited as being known or used is documents D1 and D2. Document D1 provides a fire protection seal (104) made of an intumescent material, arranged to fill a gap when fire heats the material. There is no disclosure in D1 of an electrical heating means arranged to heat the material. Document D2 provides a frame (301) with intumescent material (303) positioned at each corner (304) of the frame. The material is activated by electricity provided by a conventional socket attached to the material using resistive heating wire (302). It is stated in document D2 that intumescent material is well known as a sealing material; however there is no disclosure in D2 of the seal being for fire protection purposes. While the technologies in D1 and D2 are similar to that of the alleged invention, the problems solved by their inventions are different.
Document D1 addresses the problem of protecting against fire without the need for a separate fire detection system by using a seal that responds to heat from the fire. Document D2 addresses the problem of frame installation taking time and needing multiple fitters by providing in the frame quickly transforming foam that allows installation by a single user. The present invention, in comparison, addresses the problem of sealing the doorframe before smoke and hazardous fumes have passed through the frame by activating the seal using a separate electrical heating means. Therefore the result of the third step would give the difference between what is known and used from D1 and the alleged invention as the use of an electrical heating means to activate the intumescent material, allowing the seal to be activated before dangerous fumes have penetrated. The difference between what is known and used from D2 and the alleged invention would be the use of intumescent material to fully seal a gap and protect against fire, rather than just ease frame installation. These differences would also apply to claim 2, as claim 2 includes the subject matter of claim 1. While it is possible to mosaic prior art documents, it must be proven that the normally skilled but unimaginative addressee would be aware of the documents and have a reason to look at them together. It would be very unlikely in this case that it could be proven that a normally skilled but unimaginative addressee would know of both D1 and D2 and would also think to combine them. Document D2 relates to a different technology than D1 and the patent application main request. Furthermore, documents D1 and D2 are not explicitly linked in any way and solve different problems than the current invention. Therefore a combination of D1 and D2 to arrive at the alleged invention is very unlikely. The final step is that the court has to ask itself whether, viewed without any knowledge of the alleged invention, those differences constitute steps which would have been obvious to the skilled man or whether they require any degree of invention. The clearly obvious threshold in opposition is very rarely met in practice. The difference between the alleged invention and what is known and used from documents D1 and D2 separately would not likely be judged clearly obvious. Providing an electrical activation means to activate the sealing material before hazardous fumes and smoke pass appears to be a non-obvious advance over the technology of D1. Using the seal to protect against fire rather than just to allow ease of installation also appears to be a non-obvious improvement over document D2. Without knowledge of the alleged invention, the combination of D2 with D1 in order to arrive at the invention of the current application would also not likely be held as being clearly obvious. The different technology areas of D1 and D2 (frame fixation rather than fire protection sealing), the different problems solved by the documents, and the lack of linkages between these documents would likely cause opposition relying upon this combination to be unsuccessful.
Therefore the result of the final step would be that the difference between the alleged invention and what is known and used would be judged non-obvious. This would apply to both claims 1 and 2, as claim 2 includes the subject matter of claim 1. Revocation The differences in the obviousness ground between opposition and revocation do not appear to cause a different decision in this hypothetical case. Documents D1 and D2 are both patent documents published in New Zealand, therefore the difference between being published and used and being known and used does not apply. Although the threshold of obviousness in revocation is lower than in opposition, combining D1 and D2 to arrive at the alleged invention would again not likely be judged obvious to do, due to the different areas of technology, the different problems solved, and the lack of linkages between the two cited documents. Therefore is likely that claims 1 and 2 would still be held non-obvious under revocation proceedings. Decision The Intellectual Property Office of New Zealand does not examine for inventive step/obviousness, and hence the obviousness of claims 1 and 2 has only been determined in the hypothetical situations of opposition and revocation proceedings. The result of the determination is that claims 1 and 2 would most likely be held nonobvious in opposition in revocation proceedings. B. ADDITIONAL GENERAL QUESTIONS a) iv) The Intellectual Property Office of New Zealand does not examine for inventive step/non-obviousness.