24 September 2010

Divisional Decision Defies Deductive Determination

Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 18 (8 September 2010)
Memcor Australia Pty Ltd v GE BetzDearborn Canada Company [2010] APO 19 (8 September 2010)

Opposition – original application and corresponding divisional application both opposed – whether claims of both applications lack novelty, inventive step and/or clarity – whether claims 23 to 37 of divisional application entitled to the priority date of the parent application – whether claims 23 to 37 of divisional application lack novelty and inventive step in light of original application publication

These two Patent Office decisions, both penned by hearing officer Jacob Elijah, relate to oppositions filed by Memcor Australia Pty Ltd ("Memcor") against an initial application no. 715364 ("the parent") and an associated divisional application no. 2004203856 ("the divisional"), both in the name of GE BetzDearborn Canada Company ("GE").  The applications are directed to relatively large systems for the microfiltration of liquids, typically water in applications such as wastewater treatment.  Both have substantially the same descriptions, but different claims.

Our interest in these cases is not in the substantive basis of the oppositions.  Memcor asserted the unexceptional grounds of lack of novelty, lack of inventive step (ie obviousness) and lack of clarity.  A number of prior art documents, and much expert evidence, was tendered and considered in the decision.  Memcor was unsuccessful on all substantive grounds.

The unusual aspect of these decisions relates to the divisional application.  In particular, claims 23 to 37 of the divisional were found not to be entitled to claim the priority date of the parent application.  This does not, in itself, invalidate the application, or even the specific claims in question.  However, since these claims have a priority date no earlier than the filing date of the divisional, the published parent application is prior art.

Now, it was not disputed that claims 23 to 37 were fairly based on the specification (of both the parent and the divisional).  Logic would therefore suggest that these claims could not be novel, since any disclosure sufficient to support the claims must necessarily anticipate them.  Surprisingly, however, all of the claims of the divisional were found to be valid.


The divisional application was filed after the parent had been opposed by Memcor, and after the end of the opposition period (ie more than three months after the parent had been advertised as accepted).  Under the present Australian law, a divisional application may be filed at any time prior to grant of the parent patent, but is subject to additional restrictions once the opposition period has expired.

In particular, the legitimacy of divisional applications is governed by section 79B of the Patents Act 1990, which provides, in part, that:

(1) If a complete patent application for a patent is made (but has not lapsed or been refused or withdrawn), the applicant may, in accordance with the regulations, make a further complete application for a patent for an invention:
(a) disclosed in the specification filed in respect of the first‑mentioned application; and
(b) where the first‑mentioned application is for a standard patent and at least 3 months have elapsed since the publication of a notice of acceptance of the relevant patent request and specification in the Official Journal -- falling within the scope of the claims of the accepted specification.
The requirement (a) that the further (divisional) application be for an invention disclosed in the parent application is satisfied so long as at least one independent claim of the application is sufficiently disclosed by the parent specification.  There is no prohibition on adding subject matter to a divisional application, or even on claiming the new matter (eg in dependent claims directed to an additional embodiment).  However, any such claims will obviously not be entitled to claim a priority date earlier than the divisional filing date, at which the new matter was added.

The requirement (b) applies only to divisional applications (such as in this case) filed after the end of the opposition period.  The claims of such applications are additionally restricted to falling within the scope of the accepted parent claims.  That is, such a divisional application may not be used to broaden the applicant's rights in any way.

In this case, Memcor argued that claims 23 to 36 (with claim 37 subsequently being added to this group) did not fall wholly within the scope of the accepted parent claims, and therefore were not entitled to claim divisional status.  As a result, they would not be entitled to a priority date any earlier than the divisional filing date.

The Hearing Officer agreed, finding the priority date of claims 23 to 37 to be "the filing date of the Divisional, which is 12 August 2004" (at [40]).

Memcor did not contest the compliance of claims 23 to 37 with paragraph 79B(1)(a), thus it seems to have been undisputed that all of the claims were fairly based on matter disclosed in the parent application.

Nonetheless, the Hearing Officer found that each one of claims 23 to 37 of the divisional application, at their priority date of 12 August 2004, was novel (and involved an inventive step) over the parent application, which was published on 12 March 1997 (see paragraphs [57]-[60] and [107]-[111] of the decision).


Logically, one would think that if a claim finds adequate support within a published specification then it should be an inevitable consequence that the claim would be anticipated by the same specification, unless it is entitled to an earlier priority date.  The opponent in this case made exactly this argument (at [57]).

Conversely, if a claim is novel over a prior published specification, then it would seem inevitable that the claim could not be fairly based upon the disclosure in that specification.

Either way, with divisional claims 23 to 37 not being entitled to the priority date of the parent application, the inescapable logical conclusion would seem to be that they must be invalid.

The Hearing Office in this case adopted a somewhat unconventional approach to analysing the disputed divisional claims. Specifically (at [21]-[38]), he analysed claims 23 to 37 against the accepted claims of the parent, and (at [39]-[40]) divided each claim into a 'part a' of equivalent scope to an accepted claim (notional claims 23a to 37a) and a 'part b' comprising the remaining scope (notional claims 23b to 37b).  The purpose of this approach appears to have been to assist in determining whether or not the claims fall within the scope of the parent's accepted omnibus claims.

While this approach is not incorrect, and was effective in this particular case, we would query whether it was necessary.  As the Patent Examiners Manual points out, in Section, omnibus claims are generally "construed as being limited to the features of the invention identified by the subject of the claim, in their preferred form as described in the specification" and "[a]bsent any evidence to the contrary, it is frequently the case that the features of the broadest independent claim directed to the same invention will be the features of the omnibus claim."  It would therefore be an unusual case in which the scope of an omnibus claim would encompass matter that is not within the scope of one or more independent claims.

Regarding the analysis of whether or not the divisional claims fall within the scope of the accepted claims of the parent, the more common approach would be to apply the so-called "Distillers Test" (The Distillers Co. Ld.'s Application (1953) 70 RPC 221 at page 223), which asks whether an amendment (or, in this case, the grant of the divisional patent) would make anything an infringement that would not have been an infringement under the parent patent alone?  (See also Section of the Patent Examiner's Manual.)

Had these approaches been applied, it would have been unnecessary to create the notional 'a' and 'b' part-claims, which appear to have caused some confusion in the novelty analysis.

In particular, at paragraphs [57]-[60] of the decision the Hearing Officer appears to have assessed the novelty of claims 23 to 37 on the basis of the fact that notional claims 23b to 37b are novel, which is necessarily true by virtue of the manner in which these claims were defined.  The problem is, as we see it, that by virtue of the same definition, notional claims 23a to 37a must be anticipated by the published parent specification.  A claim is anticipated by prior art falling anywhere within its scope, even if it also encompasses novel subject matter.  So we would have expected the conclusion to be that the "real" claims 23 to 37 lack novelty.

If the applicant were to amend  the claims such that the notional claims were all included as separate actual claims, then the 'part a' claims would be entitled to the priority date of the parent, and would be valid, while the 'part b' claims would be novel over the parent publication but would, presumably, be invalid for lack of fair basis.

However we look at it, therefore, we cannot see a way to save the validity of the expanded scope of the divisional.  Which is, of course, how it should be – an applicant should not be able to extend the scope of the patent monopoly beyond the boundaries of the originally-filed patent specification.

It will be interesting to see whether Memcor appeals this decision to the Federal Court of Australia.


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