Patent Office Confirms Stricter Specification Requirements Under Australia’s “Raising the Bar” Patents Act

Dr Jim Y Onishi

Greed is Good” is a famous quote made by Gordon Gekko, a fictional character in the 1987 hit film “Wall Street”. Whilst Mr. Gekko had a great run during the film, his greed was the catalyst of his downfall.

Similarly, in Cytec Industries Inc. v Nalco Company [2019] APO 2, the Applicant has been taught a lesson that greed is not good when it comes to broad claims – more than is justified by the Applicant’s disclosure of the invention.

What was the case about?

The Australian Patent Office had to deal with interpreting the revised specification requirements of subsections 40(2)(a) and 40(3) of Australia’s “Raising the Bar” Patents Act, and whether the specification satisfied those requirements.

Relevant Law

Subsection 40(2) requires that: “A complete 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.

Subsection 40(3) requires that: “The claim or claims must be clear and succinct and supported by matter disclosed in the specification.

Background

Cytec Industries Inc (“Cytec”) filed an Opposition against the acceptance of Nalco Company’s (“Nalco”) patent application. During the opposition proceedings, Nalco filed amendments to its claims, which were opposed by Cytec and the allowance of those amended claims were heard separately.[1] The main opposition was held in abeyance until a decision issued in respect of the amendments. The main opposition was decided based on the unamended claims.

Construction of Claims

The claims are directed to a method of reducing scale in a Bayer process. Claim 1 recites:

A method for the reduction of aluminosilicate containing scale in a Bayer process comprising the steps of:

adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule, the at least one small molecule comprising [a list of components for a broad class of small molecules defined by a generic “Markush” style – list and structures omitted].

Stated simply, claim 1 is directed to a method where at least one small molecule is used to reduce scale in a Bayer process. The Delegate confirmed that this claim encompassed use of (i) single compounds; and (ii) mixture of compounds.

What did the Specification Disclose?

The specification provided a disclosure of a number of discrete small molecules, which could be used in reducing scale in a Bayer process. Thus, there is literal support for the single molecule in the text of the specification.

Notably, the specification only contained one example teaching a general method of combining three components, designated A, G and E, to form a complex mixture of compounds. Importantly, the specification only ever referred to isolating the “product mixture” and there was no disclosure or worked examples on how each compound of the mixture could be isolated.

Accordingly, the specification only exemplified use of a complex mixture containing many compounds.

The Delegate’s Observations

In determining whether a single compound and a mixture of compounds have been disclosed in a “clear enough and complete enough manner” as required by subsection 40(2)(a), the Delegate applied[2] the following 3-step test[3] and questions[4]:

(1) construe the claims to determine the scope of the invention as claimed;

(2) construe the description to determine what it discloses to the person skilled in the art;

(3) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims;

(4) is it plausible that the invention can be worked across the full scope of the invention? and

(5) can the invention be performed across the full scope of the claims without undue experimentation?

The Delegate was mindful that a person skilled in the art would be familiar with purification and isolation techniques. He considered that on the balance of probabilities, isolation of single compounds was plausible.

In relation to undue experiment, the Delegate recognised that some trial and error is allowable by supplementing the disclosure with the common general knowledge of a person skilled in the art. It was noted by the Delegate that no evidence was submitted in relation to whether a single compound could be isolated from the complex reaction mixture, or the reaction protocol could be tweaked to produce a single compound. With the lack of evidence, the Delegate found that significant work would be required to isolate the single compound from the complex mixture, more so when the process is used in an industrial setting where chromatography techniques are unlikely to be used.

The Delegate therefore considered that the specification enabled the production of a mixture of compound but not to single compounds.

In relation to the support requirement under subsection 40(3), the Delegate applied the following 3-step test:[5]

(1) construe the claims to determine the scope of the invention as claimed;

(2) construe the description to determine the technical contribution to the art; and

(3) decide whether the claims are supported by the technical contribution to the art.

The Delegate identified the technical contribution as being the use of the crude reaction mixture, which when fed to the Bayer process reduces scale formation.

Accordingly, the claims, which encompasses use of single compounds, lacked support.

Take Home Message

“Enablement” under the Raising the Bar provisions replaced “sufficiency” of disclosure under the old Act. The test under the old Act required one to determine whether the disclosure will enable a person skilled in the art to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty.[6] This meant that something falling within the claim needs to be enabled, rather than the whole scope of the claim. If this case was determined under the old Act, sufficiency of disclosure should be satisfied because the preparation of a complex mixture of compounds (which mixture is something that falls within the scope of the claims) is enabled.

“Support” under the Raising the Bar provisions replaced “fair basis” under the old Act. There are several formulations of the test for fair basis. Two of the accepted tests are to determine: (i) whether the claims travels beyond the matter disclosed in the specification;[7] or (ii) whether there is a real and reasonably clear disclosure.[8] Fair basis was satisfied as long as the disclosure of the invention was consistent with the Claims. If this case was determined under the old Act, fair basis should be satisfied because information concerning single compounds and a complex mixture of compounds are both disclosed.

This decision confirms the stricter specification requirements to obtain a patent in Australia under the “Raising the Bar” Patents Act. Applicants are advised to make sure that the specification discloses enough information to enable a person skilled in the art to practice the full scope of the claimed invention, and furthermore, ensure that the specification adequately exemplifies the technical contribution to the art made by the applicant. The stricter requirements do not mean that everything that could fall within the scope of the claim has to be disclosed in the specification and practically demonstrated to work, but rather, everything that has been explicitly claimed must be practically demonstrated to satisfy enablement and support requirements.

[1] The Decision in Cytec Inductries Inc. v Nalco Company [2018] APO 4 denied the allowance of the amendments.

[2] The Delegate identified that in Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421 at [167] the Court stated that s40(2)(a) only related to enablement but did not expand further to formulate an enablement test.

[3] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [89].

[4] Evolva SA [2017] APO 57.

[5] CSR Building Products Limited v United States Gypsum Company [2015] APO 72 at [110].

[6] Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 50 IPR 513 at [519].

[7] Olin Corp v Super Cartridge Co Pty Ltd (1977) 180 CLR 236

[8] Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd (1988) 81 ALR 79 at [95].