A Comment on Infringement and Obviousness in Australian Patent Law
| Published date | 01 December 1981 |
| DOI | 10.1177/0067205X8101200403 |
| Date | 01 December 1981 |
| Subject Matter | Comment |
COMMENT
A COMMENT ON INFRINGEMENT AND OBVIOUSNESS
IN
AUSTRALIAN PATENT LAW
BY
GoRDON
BRYSLAND*
Introduction
In Minnesota Mining and Manufacturing Co. and
3M
Australia Pty
Ltd
v.
Beiersdorf (Australia)
Ltdl
the High Court heard an infringement action,
with a counterclaim for revocation, in respect of a combination patent for
a breathable surgical tape. The significance of the case lies in its restriction
of the prior art which is properly available to support an allegation of
obviousness either to oppose the granting of a patent2
or
in proceedings to
revoke one already granted.3 The conclusion reached
in
Minnesota conflicts
with the approach uniformly adopted overseas and involved a dramatic, though
not altogether unforeseen, departure from earlier High Court authority.
When assessing the obviousness of an alleged invention, only information
contained in those documents which,
as
a matter of evidence, have passed
into the common general knowledge of the hypothetical artisan in the field,
may now be considered. Letters patent in Australia are no longer vulnerable
to obscure and recondite challenges on the ground of obviousness, and a
climate more conducive to the growth of technology has been created,
at
least in principle.
The Infringement Proceedings
The need for an improved adhesive surgical tape which would minimize
allergic reactions, irritations and maceration of the skin existed in Australia
* B.Ec., LL.B. (Hons) (A.N.U.) Legal Officer, Advisings Division, Attorney-
General's Department, Canberra. The opinions expressed in this Comment are those
of
the author. They are not necessarily those of the Attorney-General's Department
nor of any other Commonwealth Department, authority
or
officer.
1 (1979) 144 C.L.R. 253, 54 A.L.J.R. 254 (hereafter referred to as "Minnesota")
High Court
of
Australia; Barwick C.I., Stephen, Mason, Aickin and Wilson
II.
Noted:
(1980)
11
International Review
of
Industrial Property and Copyright Law 712 and
Lahore, Intellectual Property in Australia; (1981), Bulletin No.
1,
7-8.
2
S.
59(1
)(g)
of
the Patents Act 1952
(Cth)
states: "The Minister
or
a person
interested may . . . oppose the grant
of
the patent
on
one
or
more
of
the following
grounds,
but
on
no other ground:
that the invention, so far as claimed in any claim, was obvious and did not involve
an inventive step, having regard
to
what was known
or
used in Australia
on
or
before the priority date
of
that claim;".
Minnesota was followed by Fullagar I. in opposition proceedings
in
Dennison
Manufacturing Co.
v.
Monarch Marketing Systems Inc. (1981)
51
A.O.J.P. 1716, 1718
(Supreme
Court
of
Victoria) and was similarly followed by the Commissioner
of
Patents in Application No. 494753 for a patent by Canadian Industries
Ltd
(1981)
51
A.O.I.P.
40
and Application No. 486308 for a patent by Schlegel (U.K.)
Ltd
(1981)
51
A.O.I.P. 592.
3S.100(1)(e)
of
the Patents Act 1952
(Cth)
states:
"A
standard patent may be
revoked
...
,
on
one
or
more
of
the following grounds, but
on
no
other ground:
...
that the invention, so far as claimed in any claim
.•.
, was obvious and did not involve
an inventive step having regard
to
what was known
or
used in Australia
on
or
before
the priority date
of
that claim;".
Minnesota was followed by the High
Court
in revocation proceedings in The W ellcome
Foundation
Ltd
v.
V.R. Laboratories (Aust.) Pty
Ltd
(1981)
55
A.L.J.R. 249,
251
per
Aickin
I.
in whose judgment Gibbs
A-CJ.,
Stephen, Mason and Wilson JJ. concurred.
344
1981] Infringement and
Obviousness
345
before 1961.4 The first appellant,
an
American corporation, met this need
when it marketed "Micropore" tape.
That corporation became the registered proprietor of Letters patent
number 260604, dated 5 April 1961, for "Breathable Adhesive Tapes".
An
exclusive licence to make, use, exercise and vend the invention in
Australia was granted to the second appellant, 3M Australia Pty Ltd, a
company incorporated in New South Wales. When the respondent corpor-
ation, Beiersdorf (Australia) Ltd, later marketed "Leukopor" tape, the
appellants commenced a suit for infringement seeking an injunction together
with an account of profits
or
damages. Beiersdorf counterclaimed for
revocation of the patent principally on the ground that each of claims 7, 8
and 95 were obvious in the light of what was known
or
used in Australia
at
the priority date.6 Absence of novelty arose equivocally as a minor ground
relied upon in the revocation proceedings.7
The invention, which was the subject
of
claim 7, may be described as
a breathable, translucent, pressure sensitive adhesive tape, the integers
comprising it being: inextensibility, microporosity, component interlockS
and hydrophobicity. Breathability, the vital quality of the tape,
is
achieved
by microporosity in the end product. The invention as claimed was a true
combination of integers as distinct from a mere collocation of components.
Synergistic interplay of the integets resulted in a new product9 and infringe-
4 So found on the evidence by Aickin J., (1979) 144 C.L.R. 253, 297-298; 54
A.L.J .R. 254, 270.
5 Claims 7, 8 and 9 read
as
follows:
Claim 7,
"A
breathable translucent pressure-sensitive adhesive tape adapted for use
as surgical tape, and comprising a translucent nonwoven inextensible porous backing
form
[sic]
of interlaced staple textile fibers unified by a water-insoluble rubbery
fiber-binding sizing agent, carrying
an
interlocking visibly continuous adhesive coating
having a microporous structure adequate
to
permit perspiration transpiration when
applied to the human skin and being of a nature that
is
relatively non irritating
to
the
human skin as hereinbefore defined, said adhesive coating consisting
of
a water-
insoluble hydrophobic viscoelastic pressure-sensitive adhesive polymer."
Claim 8,
"An
adhesive tape according to claim 7 wherein said adhesive coating
consists solely
of
a water-insoluble viscoelastic pressure-sensitive acrylate polymer."
Claim 9,
"A
breathable translucent pressure-sensitive adhesive surgical tape consisting
of
a thin inextensivly [sic] nonwoven translucent. porous backing formed
of
a
compacted tissue
of
interlaced staple textile fibers unified by a nontacky hydrophobic
rubbery acrylate poly,er
[sic]
sizing, carrying a partially penetrating thin transparent
hydrophobic pressure-sensitive adhesive coating of a · nature that is relatively non
irritating
to
the human skin as hereinbefore defined, said adhesive coating consisting
solely
of
an
aggressively-tacky hydrophobic viscoelastic pressure-sensitive acrylate
polymer the adhesive coating being visibly continuous but having a microporous
structure such as
to
permit perspiration transpiration when the tape
is
applied to the
human skin; said adhesive tape having a thickness not exceeding 150 microns and
being highly translucent such as to permit the reacing
[sic]
therethrough
of
printed
matter when the tape
is
adhered to a printed surface.": (1979) 144 C.L.R. 253, 265-266;
54 A.L.J .R. 254, 257.
6
18
April 1960.
· 7
S.
100(1) (g)
of
the Patents Act provides,
"A
standard patent may be revoked
...
on
one
or
more
of
the following grounds, but
on
no
other ground: . . . that the
invention, so far as claimed in any claim . • .,
was
not novel in Australia
on
the
priority date
of
that claim;".
s This means that the adhesive interlocks with and partially penetrates the backing
of
the tape.
· 9 Palmer v. Dunlop Perdriau
Rubber
Co.
Ltd
(1937)
59
C.L.R. 30, 62 per Latham
C.J.,
64
per Rich J. approving comments of Lord Tomlin in British Celanese,
Ld
v.
Courtaulds,
Ld
(1935) 52 R.P.C. 171, 193.
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