25 March 2011

Patent Reform Exposed Part V – Support

Failure of support - Tacoma
Narrows bridge
In our previous article on IP Australia’s proposed reforms (before we were distracted by Ministerial announcements) we looked at the UK/European-style enablement provision in the reform Bill, and suggested that the US law might provide a better model.  At the very least, when the US Act intends to make ‘enablement’ a requirement for a valid patent, it at least uses the word ‘enable’!

We also suggested that if the intention is to require enablement commensurate with the scope of the claims, the legislation should say so.  In other jurisdictions this result has only been achieved through the development of a body of case law, and IP Australia’s hope that this will somehow be magically imported could well be misplaced.

The reason for recapping our main points on enablement is that the subject of this article – the requirement for claims to be ‘supported’ by the description – is one that even IP Australia concedes involves some overlap with enablement, as well as with inventive step.  We question whether this conflation of distinct requirements for a valid patent is useful or productive.

But, to get to the point, IP Australia is proposing to abolish the ‘fair basis’ requirement of subsection 40(3), and replace it with a requirement that ‘the claim or claims must be … supported by matter disclosed in the specification’.


The leading authority on the Australian law of fair basis is the High Court’s decision in Lockwood Security v Doric Products [2004] HCA 58.  Essentially, fair basis requires that the scope of the claims be consistent with ‘what the body of the specification read as a whole discloses as the invention’ (at [99]).

Notably, fair basis is quite distinct from other requirements under the Patents Act 1990 (a point that the Lockwood High Court was at pains to emphasise, at paragraphs [46]-[49]).  For example, a specification might include claims that are not enabled, in the current sense that there is no description of even a single embodiment in sufficient detail to enable a person skilled in the relevant art to put the invention into pactice.  Yet the claims may still be fairly-based, if the description makes quite clear what the inventor considers the invention to be, and the claims are consistent with this.

The concept of ‘support’, as it is understood in the European context, and proposed by IP Australia to be adopted here, is somewhat different.  In particular, in addition to requiring that there be appropriate ‘basis’ in the description for each claim, ‘support’ requires that the scope of the claim not exceed that which is justified by the extent of the disclosure and the technical contribution to the art that the inventor has made.

This concept of ‘support’ therefore overlaps with enablement and inventive step, the latter being so because it is not possible to assess the extent of the inventor’s ‘technical contribution to the art’ without looking at the differences between the claimed invention and the prior art.  In essence, the greater the inventive step achieved by the inventor, the broader will be the claims that might legitimately be ‘supported’ by the disclosure.


We confess that we find the interdependency between various grounds of invalidity under the European patent law to be frustrating and confusing.  In particular, the focus on ‘technical contribution’ in Europe stems from the very definition of an invention under the European Patent Convention (EPC), and crops up not only in the evaluation of ‘support’, but also in other contexts such as the assessment of whether or not a claim falls within one of the specific exclusions in the EPC (e.g. a computer program ‘as such’).

We do not really wish to see a similar regime introduced into the Australian law, and we think that there is much to be said for maintaining distinct and exclusive roles for each requirement under the Patents Act, as advocated by the Lockwood High Court. 

Having said that, the current situation is clearly problematic, in that there is a gaping hole between the existing ‘enablement’ and ‘fair basis’ requirements that can be exploited by patentees to (as Lord Hoffman expressed it in the UK decision on Biogen v Medeva [1996] UKHL 18, at [75]) ‘stifle further research and healthy competition by allowing the first person who has found a way of achieving an obviously desirable goal to monopolise every other way of doing so’.  This can be achieved under the current law by enabling a single embodiment, while making broad statements (for example using functional language) about the overall scope of the invention.  Lockwood is, arguably, a case in point.

However, we wonder whether a strengthened enablement requirement might be sufficient in itself to close the hole, without necessarily creating new overlaps and interdependencies between distinct requirements for patentability?

All jurisdictions seem to struggle to some degree with the issue of how broadly an inventor might be permitted to claim.  It is generally agreed that claims should not be necessarily limited to the embodiment(s) disclosed in the specification, but that inventors are nonetheless under an obligation to  make clear and credible  statements supporting the scope of the monopoly to which they consider themselves entitled.  Often, a greater technical advance will entitle the inventor to claim a wider monopoly, however we would think that this principle can be implemented as an aspect of enablement, e.g. disclosure of significant advances that underlie the practical development of new technical fields will necessarily enable claims of broader scope.  A reasonable approach to enablement should not be inflexible in this regard.

In the Draft Explanatory Memorandum, IP Australia suggests that harmonisation of the Australian law with overseas jurisdictions’ requirements will reduce complexity and uncertainty for applicants seeking patent protection internationally.  But introducing a European-style ‘support’ requirement will not harmonise Australian law with the US ‘written description’ requirement, or with Canadian law.  Coincidentally (or perhaps not), the New Zealand Commerce Committee recommended identical amendments to ‘enablement’ and ‘support’ requirements (in clause 37 of the new Patents Bill) to those currently proposed by IP Australia.  However, harmonisation with UK and New Zealand law may be illusory, because there is no guarantee that the courts will interpret the same words in the same way in each jurisdiction.


Overall, we cannot see what is so great about the European approach to ‘support’ that Australia should wish to adopt it.  The requirement to assess ‘merit’ or ‘technical contribution’ of the claimed invention in order to assess ‘support’ for the claims complicates the analysis, and if anything increases uncertainty.

There is certainly room for improvement, but strengthening the enablement requirement will go a long way to solving existing problems.  We fear that the ‘support cure’ may be worse than the ‘fair basis disease’! 


Mike Biagio said...

Perhaps they should state it more specifically in that there should be an enabling disclosure of how the invention works, AND support for the broader scope of the invention as well (i.e. different embodiments and alternatives, as well as actual broad langage used).

Patentology (Mark Summerfield) said...

Thanks for your comment, Mike. The idea seems to be that what you are suggesting will be covered by the combination of the new 'support' requirement, and the 'expanded' enablement requirement. Whether the use of the European/UK language is enough to import all of the corresponding principles seems doubtful, and this is not necessarily desirable anyway (even if IP Australia thinks so).

As a Kiwi, you will probably want to keep a close eye on this, because when your Commerce Committee got its hands on the NZ Patent Bill last year, one of the amendments it made was to intriduce the same language to the disclosure/enablement and fair basis/support provisions in subclauses 37(1) and (2).

Given recent announcements regarding trans-Tasman cooperation, a suspicious person might see the long arm of IP Australia at work in these changes! Or we could take the Committee's explanation at face value, and accept that it simply decided, of its own volition, to copy the UK Patents Act 1977.

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