In Sandoz AG v Bayer Intellectual Property GmbH [2024] FCAFC 135, the Full Court has taken a markedly different approach to prior art ‘ascertainment’ than the primary judge (Rofe J in Sandoz AG v Bayer Intellectual Property GmbH [2023] FCA 1321). While acknowledging that whether prior art ‘could be reasonably expected to have been ascertained’ is a question of fact, the Court has effectively lowered the bar for the evidence required to establish this factual foundation. This raises a question of whether the practical difference between the old and new law is as great as previously assumed.
The primary judge took what might be called a ‘real world’ approach to ascertainment. Her Honour wanted to see evidence of the complete search process that would have been undertaken by the skilled person, without knowledge of the target document. This included evidence of searches across multiple databases using various relevant search terms, and – critically – how the skilled person would have identified the relevant document from among all the search results that would have been generated.
The Full Court rejected this approach as too demanding. Instead, the Court held that once it is established that a document would have been found in a relevant database search, it is not to the point that additional searches might have been performed or that other documents might also have been found.
This might seem like a practical approach – after all, if a document exists in a database that would have been searched, using search terms that would have been used, isn’t that enough to show it could have been found? But this reasoning potentially introduces precisely the kind of hindsight analysis that the ‘ascertainment’ requirement was – arguably – meant to guard against.