In the recent decision of Dyno Nobel v Orica Explosives, Justice Downes needed to decide the correct date at which the disclosure of a novelty citation is assessed-the date of publication of the citation or the priority date of the patent in issue.
Her honour noted that various authorities supported the proposition that the correct approach was to assess the disclosure of a citation at its date of publication, referring to General Tire & Rubber v Firestone, ICI v Lubrizol, (both the judgment at first instance and the full court appeal) and JMVB Enterprises v Camoflag – at [324-332].
Whilst practitioners may have thought this question had been settled, her honour identified some support for the contrary position. At [331], her honour noted that Branson J had said in EI Dupont v Imperial Chemical Industries that the “ issue awaits authoritative determination in Australia”.
In the textbook Patent Law in Australia by Bodkin C, the author notes at [13040] that the priority date of the claim under consideration should be the proper date for construing the prior art- [334].
Dyno Nobel, the party seeking to revoke the patents in question, argued that it would be incongruous for different “information” to be made available by a particular document for the purpose of novelty, on the one hand, and inventive step, on the other- [335].
Her honour rejected this argument and held that one must construe the prior art document as at the date of its publication.
Whilst the judgement is clear on this issue, there perhaps is still room for further judicial analysis, given that this is a decision of a single judge.