Federal Court Offers Little Insight on How Far the Bar Has Been Raised on the Standard of Disclosure in Patent Specifications

Last week I wrote about a recent Australian Federal Court decision on patent-eligibility of a computer-implemented invention, Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421.  There is, however, a further aspect to this decision that may turn out to be of greater significance because, in addition to attacking Encompass’ patents on subject matter and novelty grounds, InfoTrack also sought to have the patents invalidated on the basis that the disclosure in the specification was deficient under the requirements of section 40 of the Patents Act 1990.  I believe that this is the first time that the current provisions, since commencement of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, have received substantive judicial consideration.  Furthermore, given that the decision has been appealed by Encompass (case no. NSD734/2018), and a Notice of Contention filed by InfoTrack, it seems highly likely that the post-Raising the Bar provisions of section 40 will soon be reviewed by a Full Bench of the Federal Court of Australia.  If so, then we may find out just how far the bar has actually been raised on the disclosure requirements.

The former version of section 40 required, among other things, that a patent specification ‘describe the invention fully’, and that the patent claims defining the invention must be ‘fairly based on the matter described in the specification’.  Over time, the courts interpreted these provisions as, in most cases, requiring only that the description should enable a person of ordinary skill in the relevant field to implement something falling within the scope of the claims without further invention, and should provide a ‘real and reasonably clear disclosure’ of the invention that is broadly consistent (or, at least, not inconsistent) with what is claimed.  In practice, this was a pretty low bar that generally allowed applicants to make relatively broad claims despite possibly having disclosed only a single, specific, implementation of an invention.

By comparison, the current version of section 40 requires that a patent specification ‘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’, and that the claims must be ‘supported by matter disclosed in the specification’.  The intended effect of these changes is, firstly, to require that the description provide sufficient information to enable the skilled person to perform the invention across the full scope of the claims and, secondly, that the scope of the claims should not be broader than is justified by the extent of the disclosure and the contribution made by the invention.  While these intentions are not necessarily apparent from the wording of the provisions, the idea is that they are implied through the use of similar terminology to that used in other jurisdictions (particularly Europe and the UK), as indicated in the Explanatory Memorandum that accompanied the Raising the Bar legislation.

If the changes to the law achieve their intended effects, then the standard of disclosure required, and the concurrence of the relationship between the description and claims, should be substantially enhanced.  I would have to say, however, that there is little in the first instance decision in Encompass v InfoTrack to indicate just how far the bar has been raised.  This appears, at least in part, to be a result of the way the case was argued, which led the court to give greater attention to what the new provisions are not, rather than to what they are.  In any event, it is to be hoped that consideration by the Full Court will be more enlightening.

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Tags: Australia, Enablement, Law reform, Raising the Bar, Support

Disclosure and Support in Australian Patent Specifications: Raised Bar Trips Applicant in Opposition

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.

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Tags: Australia, Enablement, Raising the Bar, Support

Raising the Bar on Australian Patent Drafting Standards

As regular readers will be aware, for the past few months I have been working with CCH Australia to assist in updating the patents commentary in its Australian Industrial and Intellectual Property ‘loose-leaf’ service (which is also available as an online service).  Among other content, this service provides full text legislation and detailed commentary on copyright, designs, patents and trade marks.

The most recent update to the patents commentary includes coverage of the reforms introduced in the Raising the Bar Act which are directed principally to the quality and scope of patent specifications.  This article discusses some of these reforms, and the corresponding updates to the CCH commentary.

Background

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) introduced numerous reforms to the Patents Act 1990 (Cth), many of which have been designed to lift the standards required for a valid patent to levels comparable with Australia’s major trading partners, such as the US and countries of the European Union.

The impact of some of the reforms is largely beyond the control of patent applicants and their professional advisors.  For example, the introduction of a more stringent test for inventive step means that any existing prior art may have a greater narrowing effect than it would have under the former law.  While skilled drafting of the original patent specification will, as always, maximise the options open to the applicant when unforeseen prior art arises, there is no drafting technique that will enable an applicant to claim a scope of protection for an invention that is simply no longer available under the raised inventive step standard.

There are other reforms, however, that are directed principally to the quality of the specification, and to ensuring that the scope of the patent monopoly claimed by the applicant is justified by the extent of the disclosure provided in the specification.  The skill of the draftsperson certainly plays a role in ensuring that the applicant is able validly to claim the full extent of patent protection to which they are entitled.  Conversely, if a patent specification is inadequate then the applicant may be prevented from claiming a broad scope of protection, even in the absence of pertinent prior art.

Fortunately, most Australian patent attorneys are accustomed to drafting specifications to the standards required by the major foreign jurisdictions.  Now, however, those same standards must be applied even when preparing patent specifications that will be filed only in Australia.

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Tags: Australia, CCH, Enablement, Raising the Bar, Support, Utility/usefulness

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’.

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Tags: Australia, Fair Basis, Law reform, Patent law, Raising the Bar, Support