W.R. Grace & Co v Asahi Kasei Kogyo Kabushiki Kaisha

This matter came before the High Court of Australia on an application for special leave to appeal. The applicant, W.R. Grace & Co, sought to challenge a decision concerning the patentability of an invention. The respondent was Asahi Kasei Kogyo Kabushiki Kaisha. The core of the dispute revolved around whether an invention, discovered through a programme of empirical testing, met the criteria for patentability, particularly in circumstances where the inventor did not know in advance which specific substances would yield the desired result.

The legal issue before the Court was the patentability of inventions derived from empirical testing, specifically whether the "obvious to try" test, as applied by the lower court, was a legitimate substitute for the statutory test for inventiveness. The applicant argued that this class of invention, often found in chemical, pharmaceutical, and agricultural fields, was of increasing importance and that the "obvious to try" approach potentially misapplied the law. The invention in question concerned a material that, when used in a multi-layer film, provided specific desirable properties for packaging, including heat shrink capabilities, sufficient cold seal strength, and satisfactory sealing in the presence of grease and blood.

The applicant contended that the prior art, specifically four publications known as the Union Carbide articles, did not disclose the particular combination of advantages that constituted the invention. The lower court had approached the patentability assessment by asking whether, once the testing programme was initiated, the material was something that "should be included in it," which the applicant submitted was an illegitimate substitution for the statutory test. The applicant highlighted a divergence in case law between United States and English authorities on the validity of the "obvious to try" test.