SNF (Australia) Pty Limited v BASF Australia Ltd [2019] FCA 425

SNF (Australia) Pty Limited v BASF Australia Ltd [2019] FCA 425

The Court found that SNF had not established a lack of inventive step either on the basis of common general knowledge alone or in combination with alleged s 7(3) prior art documents. Routine development leading from common general knowledge did not render the claimed invention obvious; rather, it involved new and non-obvious steps. The prior art relied upon did not clearly and unmistakeably disclose all of the claimed integers, nor did any instance of prior use satisfy the requirements to amount to anticipation or secret use. Evidence of earlier trials constituted reasonable trial or experiment and/or occurred under confidentiality, so as to be excluded from what would amount to 'secret...

Parties
Appellant/cross Respondent: SNF (Australia) Pty Limited; Respondent/cross Appellant: BASF Australia Ltd
Jurisdiction
Australia
Judgment Date
27 March 2019
Procedural Posture
Appeal / Judgment Following Rehearing De Novo of Appeal(s) From Decisions of Delegate of the Commissioner of Patents
Outcome
Appeals dismissed with costs; cross-appeals dismissed; orders that patent applications proceed to grant; stays and ancillary orders as specified.
Legal Topics
Patents, Inventive Step, Novelty, Secret Use, Opposition Proceedings, Mining Processes, Flocculation, Co Disposal, Australian Patent Procedure
Intellectual Property Patents Inventive Step Novelty Secret Use Opposition Proceedings Mining Processes Flocculation +2 more

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Parties

SNF (Australia) Pty Limited

Appellant/cross Respondent

BASF Australia Ltd

Respondent/cross Appellant

Procedural Posture

Appeal / Judgment Following Rehearing De Novo of Appeal(s) From Decisions of Delegate of the Commissioner of Patents

Legal Issues

  1. 1 Whether the patent applications lacked inventive step under Patents Act 1990 (Cth)
  2. 2 Whether the patent applications lacked novelty under Patents Act 1990 (Cth)
  3. 3 Whether there was secret use of the invention under Patents Act 1990 (Cth)

Ratio Decidendi

The Court found that SNF had not established a lack of inventive step either on the basis of common general knowledge alone or in combination with alleged s 7(3) prior art documents. Routine development leading from common general knowledge did not render the claimed invention obvious; rather, it involved new and non-obvious steps. The prior art relied upon did not clearly and unmistakeably disclose all of the claimed integers, nor did any instance of prior use satisfy the requirements to amount to anticipation or secret use. Evidence of earlier trials constituted reasonable trial or experiment and/or occurred under confidentiality, so as to be excluded from what would amount to 'secret...

Court Disposition

Appeals dismissed with costs; cross-appeals dismissed; orders that patent applications proceed to grant; stays and ancillary orders as specified.

Orders

  • Appeal VID 211 of 2016 dismissed.
  • Patent application AU 2004203785 (as amended) proceeds to grant.