14 November 2018

Drafting a Patent Specification with ‘Reasonable Skill and Knowledge’ is a Collaborative Exercise Between Client and Attorney

TeamworkA recent appeal decision by a Full Bench of the Federal Court of Australia has clarified what is meant by the requirement for a patent specification to be framed with ‘reasonable skill and knowledge’, finding that this is a collective responsibility that arises among everybody involved, including inventors, patent attorneys, and any other corporate managers or intermediaries.  Under Australian law, this requirement arises in relation to the effect of amendments on the rights of a patentee.  In particular, a patent is only enforceable during the period prior to making an amendment if the specification without the amendment was ‘framed in good faith and with reasonable skill and knowledge’.

This decision should be of interest not only to Australian patent attorneys, but to patent professionals globally who are involved in drafting specifications that may ultimately be filed in Australia, and result in the grant of Australian patents.  It confirms that responsibility for ‘framing’ a specification with ‘reasonable skill and knowledge’ does not lie solely – or even primarily – with the person tasked with actually drafting the specification, but is shared between all those involved in the process.

A competent patent attorney might be expected to have reasonable knowledge of the law and practices relating to the drafting of patent specifications, and to make reasonable efforts to obtain necessary information from a client.  However, the client has a key role to play in ensuring that the patent attorney is properly instructed.  And while the patent attorney is not necessarily expected to share the level of domain-specific technical expertise of an inventor, the specification will nonetheless be assumed to have been drafted with the benefit of the client’s knowledge of the invention, including knowledge that the client reasonably should be taken to have had, in all of the relevant circumstances.  Ensuring that this is the case is at least as much the responsibility of the client as it is of the patent attorney (or other patent professional) tasked with drafting the specification.

Amending a Patent Specification

A patent applicant, or a patentee, is generally entitled to amend a patent specification, either before or after grant, for any reason, subject to certain exceptions that are set out in section 102 of the Australian Patents Act 1990.  Aside from special circumstances (e.g. for correction of errors) the exceptions are mostly of the kind you might expect.  At no time, for example, may an amendment result in an expansion in the content or scope of the patent specification, i.e. the applicant is limited to what was disclosed in the specification at the time of filing.  Additionally, once examination is complete and an application accepted, an amendment may not broaden the scope of what is claimed, i.e. the applicant (and subsequent patentee) cannot extend the scope of the claims beyond that which was allowed by the Patent Office.

The fact that the scope of a granted patent cannot be extended is good news for competitors, because it means that acts which do not infringe the patent as originally allowed cannot be made into infringements as a result of a subsequent amendment.

However, this does not give either the patentee or its competitors absolute certainty about the scope of enforceable patent rights.  Consider the following scenario.  A patent is granted to a first party with claims of a certain scope.  A second party, such as a competitor of the first party, assesses the patent, and concludes that the claims are invalid, for example due to the existence of prior art that was not identified in the course of examination.  The second party thus decides to proceed with a commercial activity that could infringe the patent, secure in the knowledge that it is invalid.  The first party threatens to sue.  The second party responds by stating its belief that the patent is invalid.  The first party amends its claims, narrowing them to avoid the previously-unknown prior art, but in such a way that the activity of the second party remains an infringement.

To be clear, the scenario presumes that the claims before amendment were invalid, but that the amended claims are valid.  The amendment did not extend the scope of the patent, and was therefore permissible.  The activity of the second party is an infringement of both the original, invalid, claims, and of the amended, valid, claims.  The infringing activity was commenced in a good-faith (and correct) belief that the patent, as granted, was not valid.

How Does Amendment Affect Enforcement?

A question arises, in circumstances such as described above, of whether the second party should be liable for infringement of the patent?  Or, in other words, should the first party be entitled to sue and obtain relief (e.g. in the form of damages and/or an injunction) in respect of the infringing activity by the second party, either before and/or after the amendment?

I do not think that the answer to this question is self-evident.  Indeed, in order to determine the answer under Australian patent law it is necessary to look to section 115 of the Patents Act.  It is also now necessary to look to the decision of a Full Bench of the Federal Court of Australia in Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183, in which the interpretation of paragraph 115(1)(a) has been considered.  This decision has upheld, on appeal, the finding of a single judge that the specification of a patent owned by Bayer, prior to amendment, had been ‘framed in good faith and with reasonable skill and knowledge’, and that it was therefore entitled to compensation for infringement that occurred before the amendment was made.

Paragraph 115(1)(a) of the Patents Act 1990 provides that:

Where a complete specification is amended after becoming open to public inspection, damages shall not be awarded, and an order shall not be made for an account of profits, in respect of any infringement of the patent before the date of the decision or order allowing or directing the amendment:
        (a)  unless the court is satisfied that the specification without the amendment was framed in good faith and with reasonable skill and knowledge…

As the Full Court has explained (at [23]-[38]), there is a considerable legislative history behind this provision.  Long ago, in a galaxy far, far, away (by which I mean in England, prior to enactment of the UK Patents, Designs, and Trade Marks Act 1883) a patentee that had amended a patent specification had no right to expect the patent to be in any way enforceable prior to the date of the amendment.  In Perry v Skinner[1837] EngR 194 (n.b., link redirects to a PDF version of this old case) the court rejected the argument, made on behalf of the patentee, that because the ‘part of the invention’ that was infringed was not disclaimed by the amendment, the patent should be enforceable as if it had been valid from grant.  Instead, the court concluded that the legislature could not have intended that the effect of an amendment in restoring the validity of the patent should have a retrospective effect, and should be limited to ‘make the patent good for the future’.

In the 1883 UK Act, however, parliament effectively modified this blanket rule of unenforceability, prior to the date of amendment, by creating an exception where ‘the patentee establishes to the satisfaction of the Court that his original claim is framed in good faith and with reasonable skill and knowledge’.  As explained by Joseph Chamberlain, President of the Board of Trade, at the Second Reading of the Bill on 16 April 1883:

The principle of this provision was that the inventor who knowingly or carelessly claimed bad matter was not an object of sympathy. On the other hand, an infringer who knowingly infringed the good and valid part of a patent because he had discovered some portion, perhaps unimportant, which was bad or invalid, was not entitled to sympathy or protection…

To cut a long story short, the essential requirements for a specification to have been framed ‘in good faith’ and with ‘reasonable skill and knowledge’, for a patent to be enforceable in a pre-amended form, have been passed down via various UK and Australian patent legislation to this day.

What is ‘Reasonable Skill and Knowledge?’

It is clearly important to understand what is meant by:
  1. ‘good faith’; and
  2. ‘reasonable skill and knowledge’.
In Generic Health, it is fair to say that the Full Court directed less attention to the requirement of ‘good faith’ than to that of ‘reasonable skill and knowledge’.  The UK authorities cited indicate that requires that ‘the specification was framed honestly with a view to obtaining a monopoly to which on the material known to him he believed he was entitled’ (Nutrinova Nutrition Specialities & Food Ingredients GmbH v Scanchem UK Limited [No 2] [2000] EWHC 98 (Pat) at [6]).  There was no evidence or suggestion that, in this case, Bayer had acted dishonestly, or had knowingly sought to obtain a patent monopoly broader than that to which it was entitled.  The focus was, therefore, on whether or not the original specification was ‘framed with reasonable skill and knowledge’.

The drafting of a patent specification is, of course, often a collaborative effort involving people with technical knowledge of the invention (e.g. the inventors), people with an understanding of the business reasons for seeking patent protection (e.g. commercial and/or intellectual property managers), and one or more patent attorneys.  In this context, the court in Generic Health appears to have correctly recognised that framing a patent specification with ‘reasonable skill and knowledge’ involves collective responsibility (at [138]):

… the requirement of reasonable skill and knowledge … focuses on knowledge that the patentee had, or reasonably should be taken to have had, at the time the specification (before amendment) was framed, not simply information that the patentee might choose to place before the drafter. … [T]he drafter of the specification must be taken to have been “properly instructed”, as well as professionally competent and honest. If this were not so, the standard of reasonableness against which the patentee’s conduct is to be judged would be imperfect and would not meet the evident purpose of s 115(1)(a). By the same token, the patentee is not required to actually put before the drafter the scientific proof of, or the scientific justification for, its invention in order for the specification to be framed. For the purposes of s 115(1)(a), the drafter is taken to have the patentee’s knowledge of the invention, or knowledge that the patentee reasonably should be taken to have had given its circumstances. The exercise of reasonable skill is to be judged against that body of knowledge, as well as reasonable knowledge of the law and practices relating to the drafting of patent specifications.

In the Generic Health case, the absence of evidence that a particular document (which was certainly known to the inventors) supporting the scope of claims originally drafted was ever provided to the patent attorneys, or of any direct evidence that the document was considered by the personnel responsible for instructing the patent attorneys, was not relevant to consideration of whether the specification had been framed with ‘reasonable skill and knowledge’.  As the court stated (at [141]):

Generic Health’s challenge misses the mark. When assessing whether reasonable skill was exercised, s 115(1)(a) requires the assessment to proceed on reasonable knowledge and, as we have explained, reasonable knowledge is not limited to documents actually before the drafter of the specification. It is knowledge that the patentee had or reasonably should be taken to have had – whether or not the drafter, or those providing instructions to the drafter, was or were cognisant of that knowledge or its source at the time when the specification was framed. Where, of course, the patent applicant or the patentee is a body corporate, the relevant corpus of knowledge is corporate knowledge. Further, the drafter is taken to have been “properly instructed”.

Thus while actual knowledge and subjective intent may be factors in assessing ‘good faith’, the test for ‘reasonable skill and knowledge’ is an objective one.  It requires the specification to be one that would be produced by a competent, and properly instructed, draftsperson, assuming the patentee’s knowledge of the invention, which ‘must also encompass what reasonableness requires the patentee to know in the circumstances’ (at [137]).

Conclusion – Law Reflects Collaborative Nature of Drafting

On the face of the language, it might seem that responsibility for ensuring that a patent specification is ‘framed with reasonable skill and knowledge’ lies principally with the drafter.  However, the Generic Health decision makes clear that the relevant ‘skill and knowledge’ is not limited to that associated with the art of drafting patent specifications.  Anybody and everybody associated with the preparation of a patent specification, including inventors and any corporate managers or intermediaries, may possess pertinent skills and knowledge that should be brought to bear in drafting the specification. 

It is not necessary that the drafter be in possession of all of the information known to an inventor, any more than it is necessary that the inventor be skilled and knowledgeable in the law and practices relating to the drafting of patent specifications.  Ultimately, the relevant test involves an objective assessment of whether the patent specification has been adequately framed in view of the collective skills and knowledge actually possessed by, and reasonably imputed to, all involved.

Anybody who has ever been involved in the preparation of a patent application would be aware that the drafting of a specification is a collaborative exercise.  It is therefore pleasing to see the Full Court’s interpretation of the requirement for the specification to be framed with ‘reasonable skill and knowledge’ reflecting the collaborative nature of the process.


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