In Johnson Electric SA v Emerson Electric Co an Assistant Commissioner held that a patent specification published more than 50-years before the filing date of a patent application and which a diligent searcher of the relevant art could find is available for obviousness purposes – although not by itself.
The relevant document (D1) was a US patent specification filed on 16th April 1856. Subparagraph 21(1)(e) of the Patents Act 1953 defines the types of publications that can be considered for establishing obviousness.
(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:
Subparagraph 21(1)(b) defines the types of publications that can be considered for establishing prior publication. For the purposes of considering D1 provision 21(1)(b)(ii) applies.
(b) That the invention, so far as claimed in any claim of the complete specification, has been published in New Zealand before the priority date of the claim -
(ii) In any other document (not being a document of any class described in subsection (1) of section 59 of this Act):
For the purposes of considering D1 the relevant provision of subsection 59(1) is subparagraph 59(1)(b):
(1) An invention claimed in a complete specification shall not be deemed to have been anticipated by reason only that the invention was published in New Zealand -
(b) In a specification describing the invention for the purposes of an application for protection in any country outside New Zealand made more than 50 years before that date;
The opponent’s referred to commentary on the equivalent section under the old UK Patents Act 1949 which put emphasis on the phrase “by reason only” in subsection 59(1). One way of understanding the significance of this phrase is to consider an alternative substitution. If the phrase “by reason only that” is replaced with “if”, then it would quickly follow that D1 is not available for consideration under obviousness. Namely: since D1 was published more than 50-years before the application date, it would satisfy subparagraph 59(1)(b) and so would not qualify as an anticipation for the opposed application. Consequently, D1 would not qualify as a document under provision 21(1)(b)(ii). Hence, D1 does not qualify as a document that can be considered under subparagraph 21(1)(e).
However, the earlier UK commentary argued that if a document does not qualify as anticipation on account of satisfying one of the subparagraphs of (the equivalent of) subsection 59(1), this does not mean that it can simply be disregarded. Rather, such documents are still part of the art, but cannot be singled out as disclosing the invention themselves. Since anticipation by publication requires disclosure in a single document such a document is thereby excluded for novelty purposes. However, for obviousness, such a document is still part of the art and can be mosaiced with other documents forming part of the common general knowledge for the purpose of establishing obviousness. The Commissioner accepted this argument, but ultimately held on the facts that obviousness was not established.
