Expandable and Contractible Hose
2015 FCAFC 179
Product Management Group Pty Ltd v Blue Gentian LLC
The case concerned an expandable and contractible garden hose having an elastic inner tube and an a relatively inelastic outer tube. The inner tube could be made of rubber and the outer tube could be made of nylon. The case demonstrates why it is necessary to ensure that the nature of an invention is fully detailed in the specification to avoid having to rely on what would be understood by the notional skilled person to whom the application is addressed.
The notional skilled person was seen to be a person with a working knowledge of the material used for the design and manufacture of hoses. The skilled person was seen to have an understanding of fluid mechanics.
The prior art relied on to challenge innovative step concerned oxygens hose and masks. The invention as claimed, in the context of garden hoses, possessed a substantial contribution to the working of the invention.
Moreover, the case details the relevant considerations in determining whether an invention possesses an inventive step. Among other things, the contribution must be in the context of the working of the invention itself, that is the invention as claimed. The contribution need not be an advantage and may be neutral. The contribution must extend across the full scope of the claim (*excluding the boundaries of the claim). The contribution need not to be expressly stated in the specification.
There was no discussion of what constitutes a substantial advantage to the working of an invention in terms of the threshold between there being a substantial contribution and there being no substantial contribution (i.e. that which is superficial or peripheral). Generally to invalidate an innovation patent the prior art must be a knockout. The test for the prior art being a single source of information is an onerous one. Generally, an incorporation by reference of indeterminate scope will not be sufficient.
(Numbering and indentation issues may be present below)