Australian patent disclosure and support requirements – 11 February 2016
In 2013, significant changes to Australia’s disclosure and support 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.
The decision suggests that:
- a feature defined in terms of its properties is inadequately disclosed if assessing whether that property is present amounts to an undue burden beyond reasonable trial and error (more on the disclosure requirements); and
- a claim is inadequately supported if the disclosed features do not guarantee the key benefit of the invention (more on the support requirements).
