Disclosure and Support in Australian Patent Specifications: Raised Bar Trips Applicant in Opposition

Back in November 2015, the Australian Patent Office issued the first published decision to consider enhanced requirements for patent specifications that were introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012: CSR Building Products Limited v United States Gypsum Company [2015] APO 72.

The decision arises from an opposition by CSR Building Products Limited to the grant of a patent on an application by United States Gypsum Company.  The invention disclosed and claimed in the application relates to a new form of light-weight fire-resistant gypsum panels used in construction, e.g. as wall or ceiling panels.  This subject matter may not seem very exciting to most readers, however the decision itself should be of interest to all Australian patent applicants.

The Commissioner’s Delegate who heard the opposition determined that US Gypsum’s claims satisfied the requirements of the novelty and inventive step.  However, they failed to meet the new requirements for ‘disclosure’ and ‘support’.

In very broad terms, the ‘disclosure’ requirement obliges a patent applicant to teach the skilled reader how to put the invention into practice.  Under the ‘old’ law (prior to 15 April 2013) it was enough to teach just one way of doing so, and the applicant might then be entitled to claim as broadly as the prior art would allow.  Under the updated law, however, the idea is that the teaching provided by the applicant should enable the skilled reader to perform the invention across the full scope of the claims.  Broad claims should therefore require a more comprehensive disclosure of how to work the invention in a correspondingly wide range of implementations.

The ‘support’ requirement dictates, from a different perspective, how broadly the applicant may be permitted to claim their invention.  Whereas ‘disclosure’ is about the ‘how’ to work the invention, ‘support’ is about ‘what’ the inventor has actually contributed to the world.  Under the old law of ‘fair basis’ it was pretty much enough for an applicant to be consistent about how broad a patent they would like to receive, regardless of the actual contribution made.  Under the updated law, if the inventor has merely developed one new and improved way to do something, then that may be as much as she is entitled to claim.  However, if an invention is based upon the discovery of a new and previously unknown general principle that can be applied, without further invention, to produce a range of improved results, then this may provide support for a correspondingly broad claim.

The US Gypsum decision illustrates how the bar has been raised on disclosure and support, and demonstrates how the new provisions may be applied to prevent the grant of unduly broad patents.

Relevance of UK and European Law

Paragraph 40(2)(a) of the Patents Act 1990, as amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, requires the patent specification 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’.  The disclosure must be commensurate with the scope of the claims.  In particular, according to the Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, the provision is intended to:

…require enablement across the full width of the claims, while adopting language that is consistent with that used in other jurisdictions. The wording in the amendment is similar to s 14(3) of the UK patents legislation, which has been interpreted as imposing this requirement. The wording is also similar to art 83 of the European Patent Convention, which has been interpreted with similar effect. The intention is that paragraph 40(2)(a) be given, as close as is practicable, the same effect as the corresponding provisions of UK legislation and the European Patent Convention.  (Emphasis added.)

The related requirement that the claims be supported by the description is to be found in subsection 40(3), which states that ‘the claim or claims must be clear and succinct and supported by matter disclosed in the specification.’  Again, this provision is intended to import concepts from European and UK law.  As stated in the Explanatory Memorandum:

This item is intended to align the Australian requirement with overseas jurisdictions' requirements (such as the UK). Overseas case law and administrative decisions in respect of the 'support' requirement will be available to Australian courts and administrative decision-makers to assist in interpreting the new provision.  (Emphasis added.)

It is not surprising, therefore, that the Delegate cited UK authority, at [88]-[89], to explain the new Australian requirements for disclosure and support.  Specifically, he referred to the UK House of Lords decision in Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12, in which Lord Walker of Gestingthorpe said:

There is therefore high authority that the requirements of s.14(3) and s.14(5)(c) [i.e. the UK equivalents of s 40(2)(a) and s 40(3)] are closely connected. The main difference between them is that s.14(3) relates to the specification as a whole, whereas s.14(5)(c) relates to the claims which define the monopoly sought by the inventor. …

Section 14(3) and (5)(c) operate together … to spell out the need for an "enabling disclosure", which is central to the law of patents… . The disclosure must be such as to enable the invention to be performed (that is, to be carried out if it is a process, or to be made if it is a product) to the full extent of the claims. The question whether there is sufficient enabling disclosure often interacts with a question of construction as to the extent of the claims.

Disclosure

A number of principles and guidelines regarding the disclosure requirement can be gleaned from the Delegate’s decision:

1. the ‘heart’ of the test for disclosure is whether the person skilled in the art (PSA) can ‘readily perform the invention over the whole area claimed without undue burden and without needing inventive skill' (at [91]);
2. to answer this question it is necessary to (at [95]): 
   1. construe the claims to determine the scope of invention as claimed,
   2. construe the description to determine what it discloses to the person skilled in the art (PSA), and
   3. decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims;
3. the PSA may be required to carry out a reasonable amount of trial and error, however the specification and/or the common general knowledge of the PSA must be sufficient to lead that person necessarily and directly towards success (at [97]);
4. put another way, the PSA should be able, from reading the specification and claims, to perform the invention without undue burden (at [94]);
5. where a claim recites a ‘principle of general application’, i.e. an element of the claim is stated in general terms, the claim is sufficiently enabled if the PSA could reasonably expect the invention to work with anything which falls within the general term (at [100]).

Support

The requirement for support is closely related to, but distinct from, the disclosure requirement.  Some principles and guidelines may be found in the Delegate’s decision:

1. the requirement of support can be summarised as being that the scope of the claims should correspond to the technical contribution to the art (at [109]);
2. the technical contribution to the art should not be confused with the inventive concept – the latter relates to the ‘essence’ of the invention, whereas the former relates to how far that concept has carried-forward the state of the art (e.g. an invention that represents a greater advance in the art is likely to be entitled to a broader scope of protection under the ‘support’ requirement) (at [111]);
3. it is a relevant consideration whether the technical contribution to the art is a general principle or the specific examples in the specification (at [113]);
4. it is not enough that features in the claims be mentioned in the description, rather the description must be the base which fairly entitles the patentee to a monopoly of the width claimed (at [114]);
5. the task of the decision-maker is similar to, though subtly different from, that required to assess disclosure (at [115]):
   1. construe the claims to determine the scope of the invention as claimed,
   2. construe the description to determine the technical contribution to the art, and
   3. decide whether the claims are supported by the technical contribution to the art.

Application to the Specific Case

The invention claimed by US Gypsum is a fire resistant panel which comprises a gypsum core sandwiched between two cover sheets.  The invention is said to differ from prior panels (and, indeed, the Delegate found the claims to be novel and inventive) in that the core comprises ‘a crystalline matrix of set gypsum and high expansion particles having a volume expansion of about 300% or more of their original volume after being heated for about one hour at about 1560°F’.

The advantage of this structure is said to be that the panel is both fire resistant and light-weight.  However, these properties (i.e. the desired characteristics of the panel) are themselves defined in the claims, which further recite ‘the gypsum core having a density (D) of about 40 pounds per cubic foot or less and a core hardness of at least about 11 pounds, and the gypsum core effective to provide a Thermal Insulation Index (TI) of about 20 minutes or greater.’

The specification supports the fact that gypsum panels having the desired combination of properties can be made by describing a number of samples that were manufactured and tested.  Overall, a substantial number of these samples were indeed shown to have the desired properties, however a similarly substantial number were shown not to have that combination of properties.

As the Delegate noted (at [102]):

The more important question relates to the parameters that define the panels, i.e. the core density, the core hardness, the Thermal Insulation Index, and fire resistance. … there are a lot of process and starting material variables that will affect whether a panel has the claimed parameters. The specification does not provide clear guidance telling the person skilled in the art how to adjust the process and materials so as to achieve with certitude the full combination of properties, in particular the fire resistance of the panel. Where the work involved in adjusting the composition of the panels amounts to reasonable trial and error, then the specification provides an adequate disclosure. However, if the work involved amounts to an undue burden, then the specification has not provided an adequate disclosure.

The evidence showed that, in fact, the process of testing particular panels to determine whether or not they had the desired properties – fire resistance in particular – is burdensome, at least in the sense of being expensive (at [107]).  The Delegate therefore concluded that the specification does not meet the disclosure requirement of s 40(2)(a).

With regard to support, the applicant submitted that the contribution to the art lay in the use of high expansion particulates to produce a low density, fire resistant gypsum panel (at [117]).  However, the Delegate found that this was overstating the contribution, noting that the various examples in the specification show that high expansion particulates will sometimes lead to a fire resistant panel, and sometimes will not, and thus concluding that the advance made in the art was no more than the knowledge that high expansion particulates can produce a low density, fire resistant gypsum panel in some instances.  The specification did not disclose any general principle that could be applied so as to produce panels with the desired properties with a high degree of certitude.

Therefore the Delegate found that the scope of the claims exceeded the actual contribution made to the art, and the support requirement of s 40(3) was not satisfied.

Conclusion – Bar Raised on Claims By Parameters or Result

This decision demonstrates how the Raising the Bar reforms relating to disclosure and support will impact significantly on claims that rely on parameters and/or resulting properties of an invention.  There is no prohibition on ‘claiming by reference to result’ in Australia, however such claims must now be carefully drafted to ensure that they do not exceed the actual technical contribution made by the inventor.  Similarly, there is nothing inherently impermissible in claiming an invention in terms of ranges of parameters of materials or process steps, however applicants now need to take care to ensure that the description provides sufficient detail to enable a skilled worker to arrive at a working embodiment without the need for excessive or unreasonable trial-and-error.

More generally, this is the first published decision, at any level, to consider the new disclosure and support requirements.  While Patent Office decisions do not have the force of law, until such time as these provisions are considered by the Federal Court, this is best guidance we have yet received on how they are to be interpreted, and it will certainly be applied by Australian patent examiners across a range of claim formats and technologies.

Tags: Australia, Enablement, Raising the Bar, Support