Old section 40(2) learns a new trick

Whilst the IP Laws Amendment (Raising the Bar) Act 2012 made substantial changes to the law of sufficiency, for many patents the previous law continues to apply. Following the High Court decision in Kimberly-Clark Australia v Arico Trading it was generally understood that the test for sufficiency would be satisfied if the disclosure of the specification enabled the addressee to produce a single embodiment within each claim without new invention. However the Full Court decision in Tramanco Pty Ltd v BPW Transpec Pty Ltd [2014] FCAFC 23 (“Tramanco”) has cast doubt on the general applicability of that test.

In Tramanco, Nicholas J noted that in Kimberly-Clark (and also in Lockwood v Doric where the Kimberley-Clark test was reaffirmed by the High Court) the Court was concerned with product claims. His Honour then stated that certain claims, including in particular method claims, might require a different approach.

For example, a claim for a method of producing one or more of outcomes A, B or C might be infringed if the alleged infringer uses the method to produce outcome A, but not outcome B or C. Whether there is infringement in such a case will depend upon (inter alia) the proper construction of the claim and, in particular, whether it requires the use of the method to produce only one or more of outcomes A, B or C, as opposed to all three of them. Assuming the former construction … it would seem to me to be wrong in principle to hold that the description of the invention is sufficient if the specification enables the use of the method to achieve outcome A, but not outcomes B or C. It would be inconsistent with the purposes of the Act to confer a monopoly on a patentee for a method of producing any of outcomes A, B or C, if the patentee’s disclosure only enabled the use of the method to produce some of those outcomes.

The approach in Tramanco seems to be a significant departure from the test in Kimberley-Clark. Time will tell whether this approach is confined to the narrow circumstances exemplified by Nicholas J or is applied more broadly but either way it may breathe new life in the old law of sufficiency.

BEng(Civil)(Hons) LLB LLM FIPTA

Adrian is an intellectual property lawyer who combines legal expertise with deep technological knowledge to advise Australian and international businesses in the resolution of commercial IP disputes.