Dead on Arrival – The Full Court Jumpstarts a Best Method Nightmare for Divisional Patentees

The NOCO Company v Brown and Watson International Pty Ltd [2026] FCAFC 44

Introduction

On 10 April 2026, the Full Court of the Federal Court of Australia delivered its decision in NOCO’s appeal from the primary judge’s decision in The NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887.  Our article on the primary judge’s decision is available here.

The Full Court dismissed NOCO’s appeal, rejecting NOCO’s challenges on obviousness and the correct priority date for assessing novelty.  Notably, however, the Full Court overturned the primary judge’s decision that the relevant date for assessing NOCO’s knowledge of the best method of performing the claimed inventions was the filing date of the priority document and not the later filing dates of each of the divisional applications containing the complete specifications for the patents in suit.  As a result, the Full Court assessed the best method ground at these later dates, finding that the specification for each of the patents did not disclose the best method known to NOCO of performing the invention.

Background

The case concerned three Australian patents held by NOCO, relating to portable vehicle battery jump starter apparatus with safety protection:

• 2020201223 (the 223 Patent)
• 2021258059 (the 059 Patent)
• 2022201338 (the 338 Patent)

All three patents were from the same family, each claiming priority from PCT/US2014/045434 (PCT 434) filed on 3 July 2014 (the Asserted Priority Date).

The patents addressed safety problems with traditional jump starter devices, where jumper cables could accidentally contact each other or be connected with reverse polarity, causing sparking and potential injury.  The patented solution involved a control system that detected both battery presence and correct polarity before allowing a power switch to connect the internal battery to the external vehicle battery.

Although many claims were in issue, considerable attention was given to Claim 1 of the 223 Patent, which claims as follows (following the Court’s added integer sub-numbering):

NOCO brought proceedings against B&W, alleging infringement of the patents by B&W’s ‘Projecta’ brand jump starters.  B&W cross-claimed, seeking to invalidate all asserted claims on grounds of lack of novelty, lack of inventive step, failure to disclose the best method, lack of support, insufficiency and lack of utility.

The lack of novelty ground depended largely on whether the three patents were entitled to the Asserted Priority Date of 3 July 2014.  The primary judge found that many of the asserted claims were not entitled to the Asserted Priority Date, and, given NOCO’s concession that claims not entitled to the Asserted Priority Date would be invalid for lack of novelty, these claims failed on that basis.  The primary judge found that all of the asserted claims were invalid for lack of inventive step, but concluded that the best method ground was not made out.  It was not necessary for the primary judge to consider the remaining grounds of invalidity.

Key Issues on Appeal

Lack of Inventive Step

The Full Court rejected all of NOCO’s grounds of appeal challenging the primary judge’s decision that all of the Asserted Claims were invalid for lack of inventive step.  In rejecting NOCO’s challenge to the primary judge’s findings, the Court stated (amongst other things) that:

• The expert evidence established that the primary judge’s observation that inclusion of the arrangement in integers 1.6 and 1.7 in a jump starter device would have been a matter of routine involved an acceptance that there was a known problem, with a known solution, and the skilled person would choose and apply that solution without any difficulty in a jump starter having all the features of Claim 1 of the 223 Patent.
• The primary judge did not fail to assess obviousness using the skilled team as a whole.  The primary judge combined the common general knowledge of each of the product designer and the electrical engineer comprising the notional team when concluding that the invention was obvious.
• The primary judge was clearly alive to the issue of hindsight, and was satisfied that the expert evidence was not tainted or otherwise affected by any hindsight.
• An invention may be obvious even if there are numerous other obvious routes as well.  It is therefore not a requirement to find that a skilled person would be motivated to follow a single path and no others.
• When considering whether an invention is obvious in light of the common general knowledge plus a prior art document (under section 7(3) of the Patents Act), it is sufficient if the prior art document adds to the common general knowledge something that renders the claimed invention obvious in any relevant way.  Further, the question is not whether the prior art document would have led directly, and as a matter of routine, to the claimed invention, as that is not the question to which section 7(3) of the Act is directed.  Section 7(3) directs attention to the combination of information in the common general knowledge and the s 7(3) document.  And, the fact that a witness has reservations in respect of certain aspects of a document does not, without more, lead inevitably to the consequence that the skilled person would entirely disregard the document.

Priority Date

The Full Court also rejected all of NOCO’s grounds of appeal challenging the primary judge’s decision that none of the asserted claims were entitled to the Asserted Priority Date.  As a result, these claims lacked novelty as NOCO had conceded that claims not entitled to the Asserted Priority Date would be invalid for lack of novelty.

The Full Court agreed with the primary judge that the following two essential features in the priority document (PCT 434) were missing from the asserted claims:

• The use of a FET switch which was consistently identified as essential (not merely illustrative) throughout PCT 434.  PCT 434 also did not disclose the possibility that other types of power switches, such as electromagnetic switches, might be used.  In contrast, the asserted claims encompassed the use of any type of power switch.
• The use of two sensors to detect presence and polarity respectively which was consistently identified as essential in PCT 434.  In contrast, the asserted claims included claims which did not require the use of two sensors.

Accordingly, the invention claimed in each of the asserted claims was not disclosed in PCT 434, and so was not entitled to claim priority from PCT 434.

Best Method

At first instance, the primary judge had found that the relevant date for assessing NOCO’s knowledge of the best method of performing the claimed inventions was the filing date of PCT 434 (i.e. 3 July 2014), and not the later filing dates of each of the divisional applications containing the complete specifications for the Patents (being dates in 2020 to 2022).  If the relevant date was the date of filing PCT 434, this ground of invalidity failed.  However, if the relevant date was the filing date of each of the divisional applications containing the complete specifications for the Patents, then there was a factual issue as to whether NOCO was aware of a better method of performing the invention in 2020 to 2022 than that which was disclosed in each of the patents.

The Full Court overturned the primary judge’s decision on this point, finding that the language of the relevant statutory provisions and the previous judicial decisions supported the conclusion that the relevant date for ascertaining the patentee’s knowledge of the best method is the date of filing the complete specification for the patent in suit, not the earlier date of a PCT specification.

The Full Court also considered that to use such a time of filing did not create any unjustifiable asymmetrical burden on NOCO for the following reasons:

• NOCO had, through the divisional applications, claimed an enlarged monopoly in comparison to that claimed in PCT 434.
• The relevant claims in PCT 434 were limited to a jump starter with a FET switch and two sensors.  However, NOCO had discovered that such a switch was unreliable and removed that limitation from the relevant claims in the specifications in the divisional applications without disclosing that a different switch ought to be used.
• Accordingly, it was appropriate that NOCO be required to make a disclosure corresponding to the enlarged monopoly claimed in the divisional applications.  Not to require such disclosure at the later time would be contrary to the policy underpinning the best method requirement and would allow NOCO to withhold knowledge of the best method known at that later time.

As a result, the Full Court held that the specification for each of the patents did not disclose the best method known to NOCO of performing the invention.

Outcome and Implications

Accordingly, the Full Court dismissed NOCO’s appeal and ordered that NOCO pay B&W’s costs of the appeal.  The Full Court’s decision provides valuable guidance on the test and relevant evidence for lack of inventive step, as well as the correct approach to determining whether a patent is entitled to a priority date earlier than its filing date.  Most importantly, the Full Court has confirmed that the relevant date for assessing a patentee’s knowledge of the best method of performing the claimed inventions is not the filing date of the priority document but is instead the later filing dates of each of the divisional applications containing the complete specifications for the patents in suit.  Patent attorneys will need to be cautious when recommending a divisional filing strategy to ensure that applicant clients are aware that they may have an obligation to update their disclosures of best method (if a better method has been developed in the intervening time period).

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