The Federal Court recently dismissed two appeals brought by Corning Cable Systems LLC (Corning) holding that the Commissioner of Patents’ decision to refuse Corning’s patent applications on the grounds of obviousness was reasonable.  The patent applications relate to cable boxes, or “Local Convergence Points” (“LCPs”) that allow for smaller LCPs.

The patent applications state that “a need exists for LCPs that are cost-effective, are relatively small in size, and may be installed and maintained by relatively unskilled technicians”.  The Commissioner found that this statement indicates that the need for smaller cable boxes was common general knowledge and in view of this need, it would have been obvious to apply cabling techniques that allow for smaller cable boxes.

Corning tendered that the Commissioner of Patents erred by adopting information provided in the background of the patent applications, regarding existing problems with LCPs that the inventors had identified, as common general knowledge. The Federal Court disagreed, applying the Federal Court of Appeal’s reasoning in Newco Tank Corp v Canada (Attorney General), 2015 FCA 47, that it was “open to the Board to conclude that the skilled person’s [common general knowledge] was reasonably described by reference to the language presented as background information in the Patent”.  However, the Federal Court did leave open the possibility that it might not always be reasonable for the Commissioner to rely on statements in specification as indicative of the common general knowledge.

These decisions serve as reminders that a patentee’s own statements in an application may supply the necessary information for the application to be found to be obvious.

Summary By: Matthew Frontini


19 09 04

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

E-TIPS is a registered trade-mark of Deeth Williams Wall LLP.