Australian patent disclosure requirements (sufficiency) – 11 February 2016
In 2013, significant changes to Australia’s patent disclosure requirements were introduced by the ‘Raising the Bar’ Act. The new requirements apply to patents and patent applications in relation to which examination was not requested prior to 15 April 2013, and are intended to accord with analogous requirements in the UK and Europe.
Whilst these requirements are yet to face Australian judicial scrutiny, we now have an Australian Patent Office decision to provide guidance. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 the Patent Office’s delegate, Dr S D Barker, sets out a structured approach to the relevant enquiries which no doubt will be followed by patent examiners until the courts tell us otherwise.
Australian law, post-Raising the Bar, specifies at subsection 40(2) of the Patents Act 1990 that a patent specification must:
‘(a) 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
(aa) disclose the best method known to the applicant of performing the invention…’.
Dr Barker extracts [1] from UK authorities and goes on [2] to summarise the relevant enquiry in the following terms:
‘In order to decide whether a specification provides a disclosure as required by section 40(2), it is necessary to:
i) construe the claims to determine the scope of invention as claimed,
ii) construe the description to determine what it discloses to the person skilled in the art, and
iii) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims’ (our emphasis).
Two possible breaches of s40(2)a are considered. Firstly, the exemplification of high expansion vermiculite particles is apparently considered adequate disclosure of an invention defined in terms of a broader class of high expansion particles [3]:
‘…I have no doubt that person skilled in the art would be able to prepare a panel using other high expansion particulates. It seems reasonable that non-vermiculite particulates could be used in the same way, without undue burden’ [4] (our emphasis).
This suggests that ‘provid[ing] an enabling disclosure of all the things that fall within the scope of the claims’ is satisfied if it ‘seems reasonable that [some non-exemplified features] could be used in the same way, without undue burden’.
Secondly, there was found to be inadequate disclosure in connection with certain features defined in terms of their properties on the basis that tests were required ‘to achieve with certitude the full combination of properties’ [5], and these tests were expensive and rarely conducted in the industry and therefore amounted to an undue burden beyond reasonable trial and error.
‘The specification does not provide clear guidance telling the person skilled in the art how to adjust the process and materials so as to achieve with certitude the full combination of properties, in particular the fire resistance of the panel.’ [6]
‘Based on the evidence available to me, I conclude that the testing of samples to determine whether they are fire resistant would be an undue burden … It follows that I am satisfied that the specification does not provides a disclosure of the invention that is clear enough and complete enough for the invention to be performed by a person skilled in the art.’ [7]
[1] At paragraphs 91 to 94
[2] At paragraph 95
[3] The point is not made explicit
[4] At paragraph 101
[5] At paragraph 104
[6] At paragraph 102
[7] At paragraphs 107 and 108
