A recent decision of the Federal Court, Bovell v State of Western Australia [2026] FCA 991, provides two timely reminders for patent owners and litigants:
- Inventors should carefully manage documents created during the invention process, as they may later become the subject of discovery requests; and
- Parties seeking discovery should avoid broad “fishing expeditions” unsupported by a clear forensic purpose.
The Dispute
Mr Bovell and his licensee, GM & CB Pty Ltd, alleged that the State of Western Australia infringed two patents (AU 2015100604 and AU 2019203109) relating to fire-retardant mattresses. The State denied infringement and cross-claimed for revocation, alleging the patents lacked novelty and inventive (or innovative) step.
As part of the revocation proceedings, the State sought discovery of documents relating to the conception and development of the patented invention, including documents concerning the development of the Natritex FireGuard III mattress, which allegedly embodied the patented technology.
The discovery categories included:
-
- All research and development documents created on or before the priority date relating to the Natritex mattress or its prototypes.
- Inventor documents created on or before the priority date, including inventor notes, invention disclosures and working documents.
- Test reports, together with underlying testing records, videos, data and draft reports.
The definitions were drafted broadly and encompassed virtually every document generated during the invention process.
The Court’s Approach
The decision considers the long-established principle from Wellcome Foundation Ltd v VR Laboratories (Aust) Pty Ltd (1981) 148 CLR 262, where the High Court recognised that inventor documents may, in some circumstances, be discoverable because they may suggest worthwhile lines of enquiry.
However, Moore J emphasised that discovery is no longer ordered merely because documents might lead somewhere useful. Consistent with paragraph 10.6 of the Federal Court’s Central Practice Note (CPN-1), discovery will generally only be ordered where the documents are, or are very likely to be:
- significantly probative; or
- materially supportive of a party’s case.
Inventor Documents are often of Limited Relevance
The Court also relied upon BlueScope Steel Ltd v Dongkuk Steel Mill Co., Ltd [2017] FCA 1537, where Beach J observed that inventive step is assessed objectively. The statutory test is not determined by what the inventor actually thought or did.
Similarly, in Pfizer Ireland Pharmaceuticals v Samsung Bioepis AU Pty Ltd (No 4) [2024] FCA 678, Burley J refused broad discovery of inventor documents where inventive step was alleged by reference to common general knowledge and multiple combinations of prior art. The Court considered that inventor documents would add little to the issues requiring determination.
Although the present case involved only six prior art permutations rather than more than eighty, Moore J considered the underlying reasoning to be substantially the same.
Why the Discovery Application Failed
Moore J observed that the State’s inventive step case was framed in broad and general terms. The pleadings gave no indication that the inventor’s actual path to the invention was relevant to any identified issue.
His Honour described the case as taking something of a “poorly focussed, scattergun approach.”
Against that background, the applicants’ criticism that the discovery request amounted to a fishing expedition carried considerable force.
The Court noted that where inventive step is alleged by reference to common general knowledge, either alone or together with identified prior art, inventor documents are not discoverable as a matter of course. A party seeking such discovery must identify a specific forensic basis demonstrating why the inventor’s development process is relevant.
None was identified here.
Novelty did not Assist Either
The Court reached the same conclusion regarding novelty.
Whether a claim lacks novelty depends upon whether each element of the claimed invention is disclosed in a single prior art reference. That is an objective comparison between the patent claims and the prior art. It has nothing to do with how the inventor arrived at the invention or whether the inventor had seen the prior art document.
Accordingly, the prospect that inventor documents might contain useful admissions was considered too remote to justify broad discovery.
Simple Inventions can Still be Inventive
One particularly interesting aspect of the judgment concerns the respondent’s submission that the invention appeared relatively simple, and therefore the inventor’s documents might reveal that only routine steps had been undertaken.
Moore J rejected that reasoning.
His Honour observed that some of the greatest inventions appear deceptively simple in hindsight. An invention may arise from a moment of insight or inspiration rather than a lengthy research program. The absence of extensive research records therefore says little, if anything, about whether an invention involved an inventive step.
This serves as a useful reminder that simplicity should never be confused with obviousness.
Expert Evidence
The respondent also argued that the inventor documents would assist its expert witness.
The Court disagreed.
Providing inventor documents to an expert assessing obviousness would risk introducing hindsight into the expert’s analysis. Since inventive step must be assessed objectively from the perspective of the skilled person at the priority date, the inventor’s actual thought process is generally irrelevant and may improperly influence the expert’s opinion.
Practical Lessons
The decision offers several practical lessons.
For inventors and patent owners:
- Assume that documents created during the inventive process may one day become the subject of discovery.
- Maintain clear, accurate and professional invention records.
- Avoid creating unnecessary or speculative documents that may later require explanation.
For litigants seeking discovery:
- Tailor discovery requests to clearly identified issues in dispute.
- Be prepared to explain why the inventor’s documents are likely to be significantly probative.
- Avoid broad categories of discovery that resemble fishing expeditions, as the Court is increasingly reluctant to permit them.
Conclusion
Bovell reinforces the Federal Court’s increasingly disciplined approach to discovery. Broad requests for inventor documents will not succeed simply because they may reveal something useful. Unless there is a clear forensic basis connecting the documents to a live issue in the proceedings, discovery is unlikely to be ordered.
The case is also a reminder that patent litigation is assessed objectively. The inventor’s journey to the invention is often far less important than litigants assume.
Author
Written by Edward Genocchio
