A unique aspect of Australian Patent Law is the requirement that a reference must be “reasonably ascertained, understood and regarded as relevant” by the hypothetical skilled person before it can be applied in an inventive step rejection.
In practice, this means that references which are difficult to find, or difficult to understand, or which are not, prima facie, relevant to the problem being solved by the skilled person, may be excluded from the prior art base for inventive step considerations.
For some time we have speculated that it may be possible to have a non-English reference excluded from the prior art base for inventive step considerations on the basis that the hypothetical skilled person could not be reasonably expected to understand the reference and hence would not regard it as being relevant to the problem being solved.
The APO has now handed down a decision in which a German reference has been excluded from inventive step considerations. It is worth noting that the German reference did not have an English-language abstract. If there had been an English language abstract, the outcome may have been different as the abstract may have led the hypothetical skilled person to have obtained an English translation of the German reference.
Similarly, it may be possible that Figures or drawings in the reference may have been enough to cause the hypothetical skilled person to have investigated the reference more closely. However, no evidence was led by the opponent on this point.
The full decision can be found here (see paragraph 86 in particular):