technical field of a patent when
construing the patent claims and
the effect it has on analysis of
novelty and inventiveness; and
> even though an improvement
may seem obvious or simple,
arriving at the idea to make that
improvement may require much
thought and skill, and can of itself
constitute an inventive step.

The Patent
Global Tech is the owner of
Australian Patent 2012297564, which
protects a method of obtaining data
from or providing data to electronic
units of downhole equipment for
mineral exploration without having
to disassemble that equipment.

The Patent describes an optical
device capable of altering the
direction of signals travelling to or
coming from an electronics unit.

The optical device is able transfer
data even when it is located inside
of downhole equipment by using
apertures which maintain a line
of sight to the optical device.

The invention is an improvement
on previous models of downhole
equipment, in that it does not have
to be taken apart to obtain access
to a data transferral port to enable
data transfer. This allows for a much
quicker data retrieval process. This
advantage was critical in the Court’s
finding that the invention of the
patent involves an inventive step.

Global Tech alleged that Reflex
had infringed its patent by selling
downhole equipment which fell
within the scope of the claims.

Reflex admitted its products were
within the claims, but challenged
the validity of the patent, alleging
that it lacked novelty and an
inventive step in light of three
publications available before the
Global Tech patent was filed.

Novelty – The Importance
of Defining the Technical
Field of your Patent
The Court followed a fairly standard
process in assessing the novelty of
the patent. This involved construing
the terms used in the patent and
assessing whether the features
of the patent were disclosed
in the earlier publications. The
interesting aspect of the novelty
assessment was how the court
adopted a narrower construction
of the terms used in the patent.

The three publications Reflex relied
on to argue that the Global Tech
patent lacked novelty related to
wireline telemetry and oil and
gas exploration and production.

Although these technical fields
share similarities with mineral
exploration, the Court found that
the field of mineral exploration
was distinct and construed the
terms of the Patent within this
technical field. This narrowed the
scope of the features claimed in
the patent and supported Global
Tech’s arguments that the features
were not disclosed in the three
publications relied on by Reflex.

Ultimately, the Court found that
the features of the patent were not
disclosed in the earlier publications,
and that the patent was novel.

Inventive Step
As with the novelty assessment,
the Court conducted a standard
inventive step analysis seeking
to determine whether the
invention was obvious in light of
publicly available information.

Reflex argued that Global Tech’s
improvement to downhole
equipment which allowed for a
quicker data retrieval process was
obvious in light of the common
general knowledge, and even more
obvious when one is presented
with the disclosures of the three
publications they relied on.

Even though
an alteration/
improvement may
seem obvious, the
idea to make it can
of itself constitute
an inventive step.

Regarding what was disclosed in the
three publications, the Court found
that any reader reviewing the prior
art documents would find no path
to developing a downhole tool for
use in mineral exploration, as they
related to different fields. The three
publications related to wireline tools
or the exploration of oil and gas
and were considered not suitable
for use in mineral exploration.

This finding is a reminder of the
value of clearly defining the
technical field an invention relates
to in a patent specification.

The Court also found that although
the downhole tool improvement
seemed obvious, the determination
of the scope for or the need for the
improvement was not obvious.

At the time the patent was filed, it
was established that there was no
need to alter the existing products
on the market, and to do so required
an inventor to take an inventive step.

The inventive step discussion in this
decision serves as timely reminder
that the concept of inventiveness
extends beyond what seems to be
in hindsight an obvious improvement
to existing products. Even though an
alteration/improvement may seem
obvious, the idea to make it can of
itself constitute an inventive step.

Inspire November 2022
The decision highlights:
> The importance of defining the
7 Global Tech and their expert,
Professor Dupuis, argued that
the prior art documents raised
by Reflex lay beyond the field of
the patent. The patent was argued
to be directed to a downhole tool
to be used in mineral exploration.

Peter Wassouf | Associate
B.Eng (Mech) (Hons), B.Bus JD MIPLaw
peter.wassouf@pof.com.au