A sigh of relief was uttered recently by clients who, to their lawyers’ chagrin, do not keep documentation of their every waking moment: it is possible to invalidate a patent without any contemporaneous documents.
Lack of novelty is commonly raised in patent proceedings as a ground to revoke the patent. Often the prior disclosure relied on to make out the lack of novelty claim is a published document, such as an earlier patent specification.
However, novelty can also be destroyed by ‘doing an act’, such as in Damorgold Pty Ltd v JAI Products Pty Ltd  FCA 150, where prior demonstrations of a roller blind successfully invalidated many of the claims in suit.
A roller shade invention
The patent in suit related to an invention for controlling the descent and retraction of a roller blind. JAI products supplied roller blinds which included the following components:
The issue I found most interesting in this litigation was whether the patent was invalid for want of novelty.
Proving lack of novelty
Relevantly, under the Patents Act 1990 , an invention is taken to be novel when compared with the ‘prior art base’ unless it is not novel in light of ‘prior art information’ made publicly available in a single document or through doing a single act. Under the Patents Act, the ‘single act’ must have been done publicly in Australia. In relation to the ‘public’ requirement, there must be no legal or equitable restriction on a person viewing the act. So the publicly available requirement will not be met if a person bound by an obligation of confidence sees the act.
A ‘reverse infringement’ test is applied to consider whether that single act discloses all the essential integers of the patent. If all the integers are disclosed, then the claim is invalid for lack of novelty. In determining this, the Court will consider whether a person skilled in the relevant art would perceive and understand the invention.
Demonstration of the product
In Damorgold, JAI relied on the showing and making available for sale of a small number of rollerblind products it had imported and resold (called a RolaShade), which had a spring assist mechanism, prior to the priority date. However, JAI had not been able to produce any:
(a) sales invoice or receipt for the alleged purchase from RolaShades;
(b) customs or other shipping documentation; or
(c) copy of a particular catalogue in which it is claimed that the spring assist was included.
JAI also did not have any evidence from an independent witness who could verify any of these events. No witness had been put forward from:
a) The manufacturer, RolaShades;
b) Any of the 10 customers to whom JAI alleged it had displayed the relevant product;
c) Any of customers who had been shown the catalogue.
JAI produced a spring assist mechanism, but this particular sample could not be dated. JAI relied on the evidence of one of its directors, Mr Horner, who gave evidence that he had demonstrated the RolaShade product to customers and the evidence of a former employee as to the date of the importation of those products. The Court accepted this evidence. It also accepted that as JAI’s customers were entities who made blinds, they had an interest in how the blind works and Mr Horner would have readily pulled the product apart (it could be disassembled easily) to demonstrate how it worked.
Therefore, a person skilled in the art, would after inspecting the component features of the RolaShade, comprehend the complete invention claimed in the patent in suit. This was enough for the Court to accept that many of the claims in suit were not novel.
Justice Middleton said:
“It does not matter that only a few, or perhaps only one, potential customer was approached and had the opportunity to examine the RolaShades product. It does not matter that the RolaShades product was not actually dis-assembled. Each potential customer, in my view, had the opportunity of a complete examination of the internal componentry of the RolaShades product. There was no restriction placed upon any potential customer as to what he or she would do in making use of the information so obtained from an examination of the internal componentry”.
No documents? All is not lost!
So, just by not having contemporaneous documents that support your lack of novelty case does not necessarily mean that it will fail. However, try and keep your lawyer (and, ultimately, you) happy and keep contemporaneous documents. They really can make life easier.
 The other issues were infringement and whether the patent was invalid because it was not a manner of manufacture.
 s7 of the Patents Act provides:
7. (1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art in the patent area would treat them as a single source of that information;
 The term “prior art information” used in both s 7(1) and 7(3) was defined in the Dictionary in Sch 1 of the Act by reference to the “prior art base”: “prior art base” means:
(a) in relation to deciding whether an invention does or does not involve an inventive step:
(i) information in a document, being a document publicly available anywhere in the patent area; and
(ii) information made publicly available through doing an act anywhere in the patent area; and
(iii) where the invention is the subject of a standard patent or an application for a standard patent information in a document publicly available outside the patent area; and
(b) in relation to deciding whether an invention is or is not novel:
(i) information of a kind mentioned in paragraph (a); and
(ii) information contained in a published specification filed in respect of a complete application where:
(A) if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
(B) the specification was published on or after the priority date of the claim under consideration; and
(C) the information was contained in the specification on its filing date.