Patent Reform Exposed Part IV – Enablement

This article focuses on IP Australia’s proposed changes to Section 40 of the Patents Act 1990, which are intended to introduce a formal ‘enablement’ requirement into the Australian patent law.

Presently, paragraph 40(2)(a) requires a complete (i.e. nonprovisional) specification to ‘describe the invention fully, including the best method known to the applicant of performing the invention’.  Broadly speaking, the requirement to ‘describe the invention fully’ encompasses aspects of what in the US would be termed ‘written description’ and ‘enablement’, but without fully encompassing either of these distinct concepts.

More particularly, a sufficient description under the current law must make the nature of the invention plain, and must make it plain how to make or perform the invention.  Recent Australian case law confirms, however, that these requirements will be met if the description enables the skilled person to produce something falling within the scope of each claim without exercise of inventive ingenuity or undue experimentation or study to overcome any initial difficulties in following the teachings in the specification (Kimberly Clark Australia Pty Ltd v Arico Trading International Pty Ltd [2001] HCA 8).

There is currently no requirement in Australia, as exists in most other jurisdictions, that the description provide enablement across the ‘full scope’ of the claims.  IP Australia therefore proposes to raise the enablement requirement to this international standard.

THE PROPOSED AMENDMENT

IP Australia’s proposal is to replace paragraph 40(2)(a) to require the 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

On its face, this appears fine, but when placed in the context of subsection 40(2) the wording looks more problematic: ‘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’ (emphasis added).

Even setting aside the somewhat casual terminology ‘enough’ (what would have been wrong with ‘sufficiently’?), when read as a whole this paragraph requires a ‘complete’ specification to be ‘complete enough’.  So what are we (or a court) supposed to make of this circular definition of completeness?  There is, we must confess, something quintessentially Australian in this proposed provision – a kind of ‘she’ll be right, mate’ attitude in those jaunty ‘enough’s, which might just reflect IP Australia’s hopes that everyone will understand what they are getting at, and it will all work out OK in the end.  (Ironic, then, that it has been copied from European law!)

Regrettably, we know this is not how the law develops.  The cases that make it to court are the ones in which the fine distinctions matter, and they are argued (on both sides) by clever barristers whose brief is to achieve a positive outcome for their clients – not to ensure that the law is left in an orderly state for everyone else to enjoy.  And judges are required to render decisions in these cases, and to provide their reasons.  Any undue sloppiness in the drafting of legislation is therefore undesirable.

‘Best Method’

In case anybody was wondering what has happened to the ‘best method’ requirement of the present paragraph 40(2)(a), IP Australia is not proposing to abolish it.  A new paragraph 40(2)(aa) is proposed, requiring the specification to ‘disclose the best method known to the applicant of performing the invention’.

We note, out of interest, that the proposed patent reform bill recently passed by the US Senate, would downgrade the ‘best mode’ requirement of the US patent law.  While still required at the time of filing a patent application, a failure to disclose the ‘best mode’ of performing the invention would no longer be a ground for invalidating an issued patent.

THE VERDICT

We support the intent behind this amendment – the Australian patent law should include a requirement for enablement substantially across the scope of the claims.

However, we do not like the language of IP Australia’s proposed amendment to subsection 40(2).  Since this subsection essentially defines the requirements for a ‘complete specification’, to state that the description must be ‘complete enough’ is either contradictory, or tautological.  The fact that this language is used elsewhere is no reason to foist it on us!

Additionally, as is clear from the Kimberly Clark decision, the real issue in the existing Australian law has been with the words ‘the invention’ (‘[t]he term "invention" may give rise to difficulty because both in ordinary parlance and in patent legislation it is used in various senses’, at [20]).  The main problem with the current law is not that subsection 40(2) does not require enablement (i.e. a sufficiently clear and complete description for the skilled person to perform ‘the invention’), it is that the scope of the term ‘invention’ has been interpreted narrowly by the courts in this particular context.

We wonder, if it is IP Australia’s intent (as the Explanatory Memorandum states) to introduce an enablement requirement into the Australian law, why not state this clearly in the Act?  Substantially US-style terminology would do this perfectly well (i.e. from 35 USC 112), and might provide additional incentive for Australian courts to follow the US law, e.g.:

A complete specification must:
(a)     describe the invention, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.

(We would not include the US ‘written description’ terminology, for fear of importing a body of related US case law that is probably not desirable in the Australian context.)

Further clarity might be obtained by going a step further, and having the subsection expressly state the requirement for enablement across the scope of the claim, rather than enablement of at least one embodiment within that scope, e.g.:

A complete specification must:
(a)     describe the invention, as claimed in any claim, and the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same across substantially the full scope of the claim.

This is, after all, what IP Australia says is the intended effect of the amendment.  Yet, comparing the above suggestion with what is being proposed only serves to highlight the vast leeway that will be given to the courts by the language of the draft Bill.

Tags: Australia, Enablement, Law reform, Patent law, Raising the Bar