Why you can’t keep a good patent down: steel-flex posts bounce back from patent revocation

Delnorth is an Australian company that designs and supplies road signs and road-side markers. The company claims that its flagship product, the “Steel-Flex” post, can withstand being run over from either direction, never dislodges from the ground and will return to an undamaged, perfectly vertical position if run over. Spruiked as ‘the most durable post available on the market’, it has now proven itself strong enough to withstand a barrage of patent challenges following the recent decision of the Federal Court in Delnorth Pty Ltd v Commissioner of Patents [2013] FCA 165 earlier this month.

The story so far

The challenges against Delnorth began in 2009, when a competitor, Dura-Post, opposed the grant of Delnorth’s standard patent for the Steel-Flex post. A delegate of the Commissioner of Patents found that the claims of the patent lacked an inventive step. Delnorth appealed and, owing to Dura-Post entering administration, Foster J set aside the delegate’s decision and the patent was granted on 27 May 2010.

The very next day, however, the Commissioner informed Delnorth that the patent would be re-examined under s 97(2) of the Patents Act 1990 (Cth) based on the evidence filed by Dura-Post in the opposition proceedings and in the Federal Court appeal. The evidence included two prior art patents. A delegate of the

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Commissioner found that various claims of Delnorth’s patent should be revoked under s 101(1) of the Patents Act 1990 (Cth) as they lacked an inventive step in light of the prior art patents. Delnorth appealed.

The Federal Court’s decision

Nicholas J disagreed with the delegate, finding that the two prior art patents previously relied upon as constituting a part of the prior art base could not have been reasonably expected to have been ascertained understood and regarded as relevant (within the ambit of s 7(3)). In reaching this conclusion, Nicholas J noted that the prior art patents, which were granted in 1967 and 1968, were ‘old’ and unlikely to have been discovered by the skilled addressee or regarded as relevant given the evidence before the Court of the patent search practices of relevant ‘skilled’ witnesses. Accordingly, the delegate’s 2011 decision to revoke the relevant claims of the patent was set aside. Just like the road signs themselves, this patent bounced back as good as new!

Changes after ‘Raising the Bar’ legislation

It is worth noting that the present requirement for information to be ‘reasonably expected to have been ascertained, understood and regarded as relevant’ to be relied on by the skilled addressee, has been removed by the Intellectual Property Laws Amendments (Raising the Bar) Act 2012, which comes into force on 15 April 2013. The removal of this requirement will apply to any Australian patent application where a request for examination has not been filed prior to this commencement date.