In Merial, Inc v Intervet International B.V. [2018] APO 52, the Australian Patent Office (APO) considered an opposition in relation to a patent application for a veterinary injection. The opposition grounds raised  included  that the invention lacked an inventive step when compared to the prior art base. 

In arguing that there was no inventive step in the invention, the opponent cited a prior patent which was registered with the Chinese Patent Office and was written in the Chinese language.

The APO noted that in order to be considered part of the prior art base for inventive step, it is generally understood that a document must be "ascertained, understood, and regarded as relevant by the skilled worker".

The trouble with foreign language patents

To date, courts shown some reluctance to treat foreign language patents as part of the prior art base.

In the recent decision of Davies v Lazer Safe Pty Ltd (2018) 132 IPR 202, the Court found that there was no evidence to support the proposition that a person skilled in the art who identified a foreign language patent during their searches would obtain a translation of that patent "as part of that person's inventive process". 

Similarly, in Pilja v Rapidjoint Pty Ltd (2009) 80 IPR 648, the applicant sought to rely on a German-language patent containing a series of drawings. Ultimately, the Court found the drawings were not readily understandable without a written guide, and did not consider whether the inventor should have obtained a translation of the patent.

The position in Merial

The decision in Merial v Intervet International reminds us that foreign language patents can indeed form part of the prior art base, particularly in view of the availability of modern patent search databases. 

In Merial it was agreed between the parties that "an English-language translation of the abstract of [the Chinese language patent] would have most likely been available on English patent search databases". The APO noted the kinds of keyword searches a skilled worker might use when searching for prior art, and observed that the translated abstract contained two of those keywords, and additionally the original Chinese language abstract contained one keyword in English.

The APO agreed with the opponent that these factors would be sufficient to induce a skilled worker to obtain a full translation of the Chinese language patent. This was despite the arguments put forward by the applicant that a translation would be expensive, and was unlikely to be obtained by a skilled worker given only some, not all, of the keywords were identified in the abstract.

What does this mean for you?

The APO's decision reminds parties not to discount foreign language patents when considering what may be relevant prior art.

What is "ascertained, understood, and regarded as relevant by the skilled worker" is not a static concept, and will depend upon the evidence as to what a skilled worker would have done in the circumstances.  

The decision highlights that this may include consideration of foreign language patents, particularly where use of available database searches would have been likely to identify keywords in the relevant abstract.

Graduate Emily Hall contributed to this article.

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