Novelty – Direction, Recommendation, or Suggestion

Kinabalu Investments Pty Ltd v Barron & Rawson Pty Ltd [2008] FCAFC 178 http://www.austlii.edu.au/au/cases/cth/FCAFC/2008/178.html

The Full Court recently endorsed the requirement that a novelty defeating document must have a “direction, recommendation or suggestion” to clearly show the skilled addressee that the document anticipates an invention. The relevant passages of law in the judgment are at pars [25]-[27]:

“25 In Hill v Evans (1862) 4 De GF & J 288 at 300; 45 ER 1195 at 1199 (Hill v Evans) Lord Westbury LC said:

The question then is, what must be the nature of the antecedent statement? I apprehend that the principle is correctly thus expressed:- the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent.

26 In Flour Oxidizing Co Ltd v Carr & Co Ltd (1908) 25 RPC 428 at 457 Parker J said:

But where the question is solely a question of prior publication, it is not, in my opinion, enough to prove that an apparatus described in an earlier Specification could have been used to produce this or that result. It must also be shown that the Specification contains clear and unmistakable directions so to use it.

27 In Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 97 FCR 524 (Bristol-Myers) at 548, Black CJ and Lehane J, after referring to Hill v Evans and Flour Oxidizing (amongst other cases), said:

What all those authorities contemplate, in our view, is that a prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it.

See also Pfizer Overseas Pharmaceuticals v Eli Lilly & Co (2005) 68 IPR 1 at [313]-[314] per French and Lindgren JJ.”