01 December 2013

Raising the Bar on Australian Patent Drafting Standards

The Secret of SuccessAs regular readers will be aware, for the past few months I have been working with CCH Australia to assist in updating the patents commentary in its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

The most recent update to the patents commentary includes coverage of the reforms introduced in the Raising the Bar Act which are directed principally to the quality and scope of patent specifications.  This article discusses some of these reforms, and the corresponding updates to the CCH commentary.

Background

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) introduced numerous reforms to the Patents Act 1990 (Cth), many of which have been designed to lift the standards required for a valid patent to levels comparable with Australia’s major trading partners, such as the US and countries of the European Union.

The impact of some of the reforms is largely beyond the control of patent applicants and their professional advisors.  For example, the introduction of a more stringent test for inventive step means that any existing prior art may have a greater narrowing effect than it would have under the former law.  While skilled drafting of the original patent specification will, as always, maximise the options open to the applicant when unforeseen prior art arises, there is no drafting technique that will enable an applicant to claim a scope of protection for an invention that is simply no longer available under the raised inventive step standard.

There are other reforms, however, that are directed principally to the quality of the specification, and to ensuring that the scope of the patent monopoly claimed by the applicant is justified by the extent of the disclosure provided in the specification.  The skill of the draftsperson certainly plays a role in ensuring that the applicant is able validly to claim the full extent of patent protection to which they are entitled.  Conversely, if a patent specification is inadequate then the applicant may be prevented from claiming a broad scope of protection, even in the absence of pertinent prior art.

Fortunately, most Australian patent attorneys are accustomed to drafting specifications to the standards required by the major foreign jurisdictions.  Now, however, those same standards must be applied even when preparing patent specifications that will be filed only in Australia.

What has changed?

The main reforms in the Raising the Bar Act affecting the required standards of disclosure are:
  1. a complete specification is required to 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: s 40(2)(a) of the Patents Act;
  2. the disclosure required to secure a priority date — for example, in a provisional application or a foreign application from which priority is claimed under the Paris Convention — must also be clear enough and complete enough for the disclosed invention to be performed by a person skilled in the relevant art: s 40(1), reg 3.12-3.14 of the Patents Regulations 1991;
  3. the claim(s) must be supported by the description: s 40(3); and
  4. a complete specification is required to disclose a specific, substantial and credible use for the invention: s 7A.
The first two requirements above are often referred to as ‘enablement’.  They demand that the filed specification, or the disclosure in an earlier priority document, provide a sufficient teaching to enable a non-inventive skilled worker in the field of the invention to implement the invention, along with all relevant variations, across the full scope of the claims.  Before 15 April 2013, a provisional specification was required only to ‘describe the invention’, while a complete specification was required to ‘describe the invention fully’.  It was generally sufficient that the disclosure teach the skilled person to implement at least one variation of the invention falling somewhere within the scope of the claims.  The new provisions are discussed at ¶53-160 of CCH’s Australian Industrial & Intellectual Property.

The third requirement above, for ‘support’, has replaced the old ‘fair basis’ test, according to which the description needed to provide only a ‘real and reasonably clear’ disclosure of the invention as claimed.  Under the fair basis standard, it was also the case that a relatively limited disclosure — of perhaps only a single embodiment of the invention — could justify a much broader claim scope, so long as there was nothing in the specification which was inconsistent with that scope.  The new support standard is derived from the language of European legislation and is intended to impose a requirement that the claims must not be broader than is justified and must be consistent with what is described.  This new standard is discussed at ¶53-230 and ¶53-240 of the patents commentary.

The fourth requirement above extends the requirement for ‘utility’ or ‘usefulness’ (without limiting in any way the existing tests developed over the years by the courts).  The new requirement for a ‘specific, substantial and credible use’ is particularly pertinent to inventions in the chemical, pharmaceutical and biotechnology fields.  Whereas it may have been possible in the past to support a claim to a composition of matter (e.g. a chemical compound or a genetic sequence) based on a degree of speculation in relation to its likely applications, the new test requires a persuasive disclosure, based on credible reasoning and/or experimental results, to support any claims to utility.  This is discussed at ¶62-050 of the patents commentary.

The new provisions apply to all patent applications filed on or after 15 April 2013, and all earlier-filed applications for which a request for examination was not filed prior to 15 April 2013.

Impact of reforms on drafting standards

Patent specifications drafted to satisfy the requirements of major foreign jurisdictions, such as the US and Europe, will generally meet the new Australian standards.  In the past, however, an applicant might have expected that the description in such a specification would support broader claims in Australia. That is no longer the case.

Practitioners drafting patent specifications principally for filing in Australia must now take additional care to ensure that the new requirements outlined above are satisfied.

Under the new ‘enablement’ provisions, if an applicant wishes to claim a range of different embodiments of an invention, it is necessary to provide a disclosure of commensurate scope.  This may require the specification to provide details of multiple options and alternatives for putting the invention into effect, whereas in the past a single example, or embodiment, of the claimed invention would have been sufficient.  This does not necessarily mean that a specification disclosing a single example, or only a small number of variations, of the invention cannot satisfy the requirements.  However, in this case it must be possible for the skilled person to extend the teaching of the specification to produce the invention across the full width of the claims, without undue burden, or the need for further invention.

Similarly, the new ‘support’ test imposes a more stringent requirement for correspondence between the overall disclosure in the specification and the scope of the claims than was provided under the former ‘fair basis’ test.  Practitioners must now ensure that the description provides a clear basis for each claim and that the extent of the description, drawings and the contribution which is disclosed to be made by the invention to the art are sufficient to justify the scope of the monopoly claimed.

The requirement that the specification disclose a ‘specific, substantial and credible use’ also imposes additional demands on practitioners, particularly in those fields of technology where pressures to file early in the development cycle tend to encourage speculation about the potential applications and effectiveness of the invention.  The language of the new ‘utility’ provision is derived from the US law, where it is understood that:
  1. ‘specific’ means a use specific to the subject matter claimed, which is capable of providing a well-defined and particular benefit to the public;
  2. ‘substantial’ means that the claimed invention does not require further research to identify or reasonably confirm a ‘real world use’; and
  3. ‘credible’ means that there should be no significant reason to doubt the effectiveness of the invention to produce the asserted results, nor the objective truth of the statements in the specification.
Generally, utility is judged on the face of the specification, particularly during examination.  However, in contested proceedings (e.g. in the course of an opposition, or during revocation proceedings before a court) extrinsic evidence of inutility, such as independent experimental testing of claims made in the specification, may be employed.  These factors should all be kept in mind when drafting patent specifications.

Updates to the CCH Patents Commentary

In view of the above changes, ¶53-000ff of the patents commentary in CCH’s Australian Industrial & Intellectual Property service has been reviewed and updated to reflect the new enablement and support requirements for drafting and interpretation of patent specifications. The commentary was updated earlier in the year to reflect the new utility requirement, in ¶62-050.

More to come …

The project to bring the patents commentary up to date with the Raising the Bar reforms, and other recent developments in Australian patent law is now nearing its conclusion. A final update will cover reforms to regulation of the patent attorney profession as well as changes to provisions governing the amendment of patent specifications and other documents.

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