Changes brought about by the commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 were intended to make the tests for support and disclosure in a patent specification harder to satisfy. Australian patent examiners have taken enthusiastically to raising disclosure and support objections since the new law commenced.
The old tests for sufficiency and fair basis
Prior to the Raising the Bar Act, the established test for sufficiency was:
"… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty" (Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at [25])
This test for sufficiency was relatively easy for a patent applicant to satisfy; all that was required was to demonstrate that the addressee of the specification could produce one thing within the scope of each claim (without new inventions, additions or prolonged study of matters presenting initial difficulty).
Likewise, the old law of fair basis merely required consistency between what is claimed and what the specification discloses as the invention. In many instances, consistory clauses matching the claims would satisfy fair basis.
New tests for disclosure and support
In 2013, the Raising the Bar Act came into force, bringing with it a new test for sufficiency (disclosure) and support requirements in Sections 40(2)(a) and 40(3):
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;
(3) The claim or claims must be clear and succinct and supported by matter disclosed in the specification.
The intent of the new provisions was to replace the previous tests for sufficiency (s40(2)(a)) and fair basis (s40(3)) with tests more closely aligned with other jurisdictions, such as in UK legislation and the European Patent Convention. The new support requirement (s40(3)) was intended to pick up the concepts that there must be a basis in the description for each claim, and the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.
Australian Patent Office decisions
CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR)
This was a decision from an opposition to grant of a patent relating to lightweight, fire resistant gypsum building panels.
While the specification contained a number of aims of the invention, the Patent Office stated the actual nature of the invention was not clearly expressed. Although the specification provided 20 examples of gypsum panels made according to the general principle of the invention (the use of high expansion particles to produce fire resistant panels), 11 of the 20 exemplified panels failed a fire resistance test.
As it could not be predicted which panels would be fire resistant, it was held that the specification did not provide clear guidance on the process and materials required in order to achieve a low density, fire resistant gypsum panel. Due to the cost associated with fire rating tests (at least US$50,000), the Office held that there would be an undue burden on the skilled person to determine whether panels falling within the scope of the claims would be fire resistant. As a consequence, the specification did not contain a clear and complete enough disclosure for the invention to be performed by the person skilled in the art.
Evolva SA [2017] APO 57
In another Patent Office decision, claims directed to enzymes used to prepare mogroside artificial sweeteners were considered by the Patent Office to be supported by the specification. The claims covered methods of producing mogrosides using an enzyme at least 90% identical to one of five enzymes disclosed in the specification. The Patent Office held that the applicant does not need to make and test every single polypeptide falling within the scope of the claims in order to satisfy the disclosure and support requirements. Instead, the Office held it was plausible that polypeptides at least 90% identical to those described in the specification could have the required activity. In addition, the specification provided sufficient guidance to the skilled person to generate and test variants without apparent difficulties or prolonged research or experimentation.
The first Federal Court decision on support
Encompass Corporation Pty Ltd v InfoTrack Pty Ltd (2018) 130 IPR 387
Encompass sued for infringement of two innovation patents relating to methods for conducting searches across multiple databases. Although infringement was admitted, InfoTrack cross-claimed for invalidity of the innovation patents on several grounds, including sufficiency (disclosure) and support.
InfoTrack argued that the defining characteristic of the claimed invention was that data sources to be accessed should be 'remote data sources', however, nothing in the specification explained why that limitation should exist. The specification was indifferent to whether the data source was local or remote.
InfoTrack agreed that the specification was enabling, but argued that s40(2)(a) also required that the disclosure of the specification should be clear, picking up the old fair basis test that there should be a real and reasonably clear disclosure of the claims in the specification. The Federal Court disagreed, stating that the only requirement now in s 40(2)(a) relates to enablement. Ultimately, the Court found that while the specification was 'agnostic' as to whether the claimed feature of the database was a remote database or not, claims relating only to remote data sources were clearly supported under Section 40(3).
Looking forward
Gone are the days under Australian law where exemplifying a single embodiment of an invention and a consistory clause in the description would be enough to satisfy the old tests for support (sufficiency and fair basis).
Early Patent Office decisions under the new law suggest that if a patent applicant is seeking broad claims, they will likely need to have exemplified several embodiments in the specification. Applicants may also need to persuade patent examiners that it is at least plausible that other embodiments falling within the full scope of the claims could be achieved by the person skilled in the art, without undue burden or the need for prolonged experimentation.
So far, the Federal Court's consideration in Encompass was limited to support under s 40(3) and did not have to consider the requirement for disclosure (enablement) under s 40(2)(a). We will be looking forward to further clarification of the disclosure and support requirements from the Federal Court.
FB Rice
Level 23, 44 Market St Sydney NSW 2000, Australia
Tel: +61 2 8231 1000
Fax: +61 2 8231 1099
