By Tyson Keed, Patent & Trade Marks Attorney
The introduction of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 sought to overhaul of the Australian IP system. The majority of these changes affected the patent system. The changes sought to increase the robustness of Australia’s patent laws, bringing them more into line with major trading partners such as the US and Europe. Some of the most significant changes are intended to set higher thresholds for the level of disclosure and support required in a patent specification. This article focuses on the level of information a patentee must provide in the specification to make it ‘over the bar’.
Under previous provisions, Australian patent law required that a patent specification describe the invention fully and that the claims be fairly based on the matter described in the specification. The test required that there be enough information in the specification for a person skilled in the art to perform the invention within the scope of the claims. The fair basis requirement was considered satisfied if the specification contained a ‘real and reasonably clear disclosure’ of what was claimed.
Under the new provisions, the Act now requires that:
- ‘A complete specification must 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’(s 40(2)(a)); and
- The claim(s) must be ‘supported by the matter disclosed’ in the specification (s 40(3)).
Sufficiency
The new ‘clear enough and complete’ language is intended to require that sufficient information must be provided across the whole width of the invention, as stated in each claim. There must be enough information for the skilled person to perform the invention across this width without undue burden or the need for further invention. This is a much stricter requirement.
The disclosure requirement has been amended to conform substantially to the corresponding United Kingdom provision, and the explanatory memorandum makes it clear the new provision is intended to be interpreted in a similar manner to the corresponding United Kingdom provision.
This applies to both provisional and standard applications. The only difference is that a provisional application need not disclose the best method of performance of the invention.
Fair basis
The new support requirement is intended to encompass two aspects, one being that there must be basis in the description for each claim and that the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.
The new support requirement will also apply in relation to the assessment of priority entitlement, substantially raising the level of disclosure required to support a priority claim in Australia.
How to interpret the changes
Until recently there has not been any further guidance on how these new provisions are to be interpreted. However, the Australian Patent Office (APO) has now issued its first opposition decision on a patent application under these new provisions in CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (CSR).
CSR filed a patent application for fire resistant building panels made from a gypsum core that includes high expansion particles (such as high expansion vermiculite) sandwiched between two cover sheets. The advantage of this structure is said to be that the panel is both fire resistant and light-weight. Importantly these properties are required as part of the claim.
The specification provided example compositions of 20 different sample panels and tested them. Whilst some of the sample products did exhibit the required properties, a number of these examples did not. When assessing the question of sufficiency, the hearing officer referred to UK case law (as allowed under the provisions) which asks “Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?” To answer this question, the hearing officer adopted a three-step approach, namely:
- Construe the claims to determine the scope of invention as claimed.
- Construe the description to determine what it discloses to the skilled person.
- Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
In answering these questions, the hearing office found that the specification failed to provide an enabling disclosure for panels with the required fire resistance properties.Whilst there were detailed disclosure of different types of starting materials and process variables, the specification did not disclose how to adjust the process and materials so as to achieve with certainty a fire resistant panel. The work involved in selecting the right combination of starting materials and then testing the fire resistance therefore did not amount to ‘reasonable trial and error’.
In assessing support requirements, the hearing officer again followed a threestep approach:
- Construe the claims to determine the scope of invention as claimed.
- Construe the description to determine the technical contribution to the art.
- Decide whether the claims are supported by the technical contribution to the art.
The hearing officer concluded that only some of the sample preparations produced panels with the required physical properties. As a result, the technical contribution to the art as required by step was limited to the particular examples which had the correct properties. It followed that the only contribution to the art that the specification was able to provide was that high expansion particulates could be used to make fire panels with the desired properties. The specification therefore did not disclose any general principle that could be applied which always produced panels with the required properties. Accordingly the claims were found to have travelled beyond the matter disclosed in the specification and therefore failed to comply with s 40(3).
“There must be enough information for the skilled person to perform the invention across this width without undue burden or the need for further invention. This is a much stricter requirement.”
How high has the bar been raised?
As the CSR specification did provide the skilled person with a method to produce a panel that did pass the mentioned fire resistance testing, it is probable that the sufficiency requirement under the old Act would have been met. Likewise, the claims also could have satisfied the fair basis requirement, since there was a ‘real and reasonably clear disclosure’ of the claimed invention. The fact that these criteria were no longer met highlights the differences the Raising the Bar Act has of the internal disclosure and support requirements of patent applications.
Applicants now need to ensure that the description provides sufficient detail to enable a skilled worker to arrive at the invention without the need for excessive or unreasonable trial and error. This may require the specification to provide details of multiple options and alternatives for putting the invention into effect. Care needs to be put into consideration of providing disclosures across the whole claim, rather than just within the scope of the claim. There does still remain some room for the skilled addressee to carry out a reasonable amount of trial and error. However the detail in the specification must be sufficient to lead that person, with an assumed amount of common general knowledge, towards a working form of the invention. The broader the claim is, the more comprehensive the disclosure of how to work the invention in a wide range of embodiments is needed.
Support and disclosure are now more distinctive from one another and have separate requirements. If the inventor has merely developed one new and improved way to do something, then that may be as much as they are entitled to claim. For claims to be supported, they must not be broader than justified by an invention’s technical contribution to the art. Examples in a specification may help to inform the extent of the technical contribution. 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 level of disclosure required for a provisional application is to be increased to the extent that it almost requires the same level of disclosure required for a complete specification. Considerations of disclosure and support should likewise be made at the provisional stage. This will likely see a move towards more comprehensive drafting of provisional applications. Failure to do so may result in invalid priority claims when filing complete applications.
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