Some of the most significant changes to the requirements for a valid patent brought about by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 have been in the area of support and disclosure. A key rationale for the grant of patent rights has always been that in return for a limited monopoly, the patentee provides a full and complete description of the invention so that after expiry, the public has the benefit of that information and can perform the invention without undue and further inventive effort.
Prior to the RTB Act, section 40(2)(a) of the Patents Act required that the specification “shall describe the invention fully “. The High Court decision in Kimberley Clarke v Arico had been interpreted as directing that all that was required to satisfy s 40(2)(a) was the disclosure of a single embodiment within the scope of a claim. In many instances the requirement could be satisfied by reference to the examples or drawings in the specification. There were few instances where courts found that the disclosure requirement had not been met.
The RTB Act replaced this provision with a new requirement that the complete specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a relevantly skilled person. The purpose of the amendment was to require a greater depth of disclosure and bring Australian law into line with requirements in the UK and Europe. Hence guidance on the implementation of the new section has been drawn from UK and European authorities.
The intention of the new section is to require enablement across the full width of the claims without undue burden or the need for further invention.
The first consideration of the new disclosure requirement occurred in CSR Building Products v United States Gypsum Company (CSR), a decision of the Australian Patent Office. The office determined that it was appropriate to apply a three-part test to assess disclosure:
Construe the claims to determine the scope of invention as claimed;
construe the description to determine what it discloses to the skilled person; and
decide whether the specification provides an enabling disclosure of all things that fall within the scope of the claims.
The case concerned a patent application for fire resistant building panels made from a gypsum core including high expansion particles. The specification exemplified 20 sample panels and provided fire resistance test results for each sample. Some samples did not pass the tests.
The claims recited parameters to define the features of the panels, one being fire resistance. The delegate found that the new disclosure requirements were not met because the cost of doing fire resistance testing on any panel to determine whether it met the claimed feature was prohibitive. The required testing therefore imposed an undue burden. Interestingly, the undue burden consideration was assessed not from a technical perspective but from an economic viewpoint.
The three-part test in CSR was expanded upon in later decisions. In particular, the principle of “plausibility”, derived from UK decisions, has been applied in Australia. It is relevant to ask whether the invention can be plausibly worked across the full scope of the claim without undue burden. A consideration of “plausible” excludes speculative patents based on mere assertion.
The RTB Act also introduced the requirement for support in s 40(3) which now states that the claim or claims must be clear and succinct, and supported by matter disclosed in the specification. This replaces the previous requirement that the claims be fairly based.
In practice, the requirement for support has been closely aligned with the requirement for disclosure. To determine whether a claim is properly supported by the description, it is necessary to:
Construe the claims to determine the scope of the invention as claimed;
construe the description to determine the technical contribution to the art; and
decide whether the claims are supported by the technical contribution to the art.
Again, the support requirement is intended to align Australian law with the positions in the UK and Europe. The new support requirement is more onerous than the previous fair basis test, which could often be satisfied by a coincidence of language between the description and the claims.
Recent decisions by the Federal Court have established that the enablement and support obligations are not met merely by identifying an inventive concept by which all embodiments falling within the claims – whether realized already or developed in the future – can be expected to provide a useful benefit. Rather, the specification must enable the skilled person to actually produce all relevant physical variants of a product, or work all relevant variations of a process, without undue burden or the exercise of inventive skill.
In practice, this provides a powerful defence to those accused of patent infringement – even where the infringing product embodies the same inventive concept disclosed by the patent in suit. If it can be shown that the skilled person, starting from the disclosure of the patent specification, would have needed to exercise undue effort or inventiveness to develop the allegedly infringing product, then patent claims which encompass that product are likely invalid.
Recently, the Federal Court in TCT Group v Polaris considered a patent specification which claimed a hinge for a glass panel with a dampener aligned within the plane of the panel, but disclosed only embodiments where the dampener was oriented normal to the hinge axis. The Court found that the specification did not enable embodiments – such as the allegedly infringing product – where the dampener was oriented parallel to the hinge axis. It was not relevant that both dampener orientations could be expected to solve the problems associated with prior art configurations having the dampener normal to the plane of the panel.
Patent applicants seeking a broad scope of protection for a specific innovation must therefore consider alternative ways of embodying the inventive concept and disclose as many of those variants in as much detail as possible in the specification.