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.