Construing relative terms in Australian patent claims: when expert evidence does not assist

Dr Victoria Longshaw and Dr Nigel Parker

In a recent decision, Fei Yu trading as Jewels 4 Pools v Beadcrete Pty Ltd [2014], the Federal Court of Australia dismissed an appeal by Fei Yu trading as Jewels 4 Pools, and it distributors (“the Appellants”), against the primary Court’s decision to uphold Beadcrete Pty Ltd’s (“the Respondent”) Australian Patent No. 733668, and confirmed infringement by Fei Yu, and it’s distributors.

This decision provides a useful construction of the relative term “average” as used in the claims of the patent at issue. The way in which the court approached the interpretation of this relative term is relevant to Applicants prosecuting Patent Applications in Australia.

The Patent

Australian Patent No. 733668 relates to surface finishes for pathways, walls, swimming pools and other structures. The claimed invention is directed to aggregate mixes which include glass beads mixed in a matrix of cementitious material. Beadcrete Pty Ltd had observed difficulty in using glass beads, either alone or with other aggregate materials such as semiprecious stones etc. in such aggregate mixes, as the glass beads tended to lack the required porosity or toughness to establish an effective bond with a matrix material. The glass beads also tended to impart alkalinity.

In solving this problem, Beadcrete Pty Ltd had claimed an invention having glass beads of varying sizes with an average particle size within the range of 1.5 to 4.5 mm, and having a size distribution defining a major component of beads within a relatively large incremental size range and a minor component of beads in a smaller incremental size range, the weight of the beads in the larger incremental size range being greater than those within the small incremental size range.

Validity Issues

On appeal, the Appellants argued that the majority of the claims were unintelligible, incapable of infringement, and invalid because the claim referring to the particle size distribution did not identify a “specified midpoint.” The appellants also argued that the claims lacked novelty in light of prior art which, it was asserted, disclosed the addition of large beads within the size distribution cited in the claims.

Expert evidence was submitted as to the meaning of the word “average.” This evidence was provided by an engineer who specialised in the construction of swimming pools. However, the Appellants did not suggest that the expert’s evidence was directed to the meaning of technical or scientific terms, or to unusual or special meanings.

The Respondents adopted an approach to claim construction which depended upon the term “average particle size,” submitting that the meaning of the word “average” had to be determined within the context of the definition of the particle size distribution. That is, that there were to be larger and smaller glass beads. Four meanings of the word “average” were advanced, each meaning providing a possible method for assessing the average size of particles in a sample of aggregate.

The primary judge had not been convinced that the expert for the appellants was a skilled addressee in the art, and further considered that the term “average particle size” was not a technical term requiring expert evidence, stating that it was for the Court to construe the claim. The judge concluded that an average particle size could easily have been determined by a person skilled in the art by simply identifying the weighted average particle size based on the weight distribution of different sizes of particles. The primary judge observed that “it would have been inconceivable to those skilled in the art of mixing an aggregate into a cementitious matrix to form a surface finish that they would concern themselves with the absolute number of glass beads or the absolute size of any particular glass bead, be it the largest or smallest, in any given matrix.”

The primary judge also held that the prior art did not anticipate the claimed invention because it failed to teach that there could be a particle size distribution in which there were more larger sized beads than smaller sized beads.

The Court of Appeal agreed with the primary judge’s conclusions, and upheld the patent.

The Appellants construction case, alleging that the integer citing “a particle size distribution” must be construed in isolation from other integers in the claim, was considered by the Court of Appeal to be fundamentally flawed. The Court reiterated that the meaning of each claim must be determined by reference to the words, in the context of the specification as a whole.

The infringement order was also upheld, and infringement by the respondents confirmed pursuant to section 117 of the Patents Act 1990. Section 117 provides that patent infringement occurs where a product is supplied by one person to another, in circumstances where the use of that product by that person would infringe that patent.

Take-home message

This case is a useful reminder to Patent Applicants and Patentees in Australia, that although experts may give evidence as to the meaning which those skilled in the art would give to technical or scientific terms and phrases, it is for the Court to interpret words bearing ordinary meanings. Furthermore, integers cited in a patent claim will be interpreted within the context of other integers in that claim, and within the context of the specification as a whole. In such circumstances, the submission of expert evidence as to the meaning of a relative term used in the claims, and which has an ordinary meaning, will not assist.

An oral exclusive licence can provide standing in Australian Infringement Proceedings

Dr. Victoria Longshaw and David Franklin

In Damorgold Pty Ltd v JAI Products Pty Ltd (No 3) [2014], the Court considered whether one of the Applicants in earlier patent infringement proceedings had standing to sue in terms of an oral exclusive licence.

The standing of an exclusive licencee to sue in Australia

In Australia, both patentees and exclusive licensees may start patent infringement proceedings in terms of Section 120 of the Patents Act 1990 (Cth). An exclusive licensee is defined as “one who has the right to exploit the patented invention throughout [Australia] to the exclusion of the patentee and all other persons.”

While the Patents Act 1990 and Patent Regulations 1991 specify that any interest, including a licence is “prescribed information” and must be registered on the Patent Register, there are no penalties for failing to register a licence. It is the licence instrument that creates the right and not the act of registration. However, the registration of a licence provides prima facie proof of an exclusive licensee’s standing in Court if it wishes to enforce the patent against infringers.

However, as the legislative definition of an exclusive licensee does not require the licence to be in writing, an exclusive licence may include an oral agreement which, due to its undocumented nature, cannot be registered on the Patent Register. In the event of there being an oral licence only, the exclusive licensee will have to provide evidence of that oral licence to an Australian Court in support of their ability to sue in patent infringement proceedings.

The issue between the parties

On 28 February 2014, Justice Middleton of the Australian Federal Court handed down the Decision in Damorgold Pty Ltd v JAI Products Pty Ltd [2014] that JAI Products Pty Ltd (“JAI Products”) had infringed valid Claims 23 and 27 of Australian Patent No. 760547, owned by Damorgold Pty Ltd (“Damorgold”) and allegedly exclusively licenced by Vertilux Corporation Pty Ltd (“Vertilux”).

Damorgold and Vertilux, (“the Applicants”) contended that Vertilux was an exclusive licensee in terms of a written Licence Agreement dated 9 July 2010, which recorded and confirmed the terms of an oral licence granted to Vertilux since at least 1 January 2006. The recordal of Vertilux as an exclusive licencee on the Patent Register provided prima facie proof of its standing to sue in terms of Section 120 of the Patents Act.

JAI Products argued that Vertilux was not an exclusive licencee because a pre-existing licence had been given to another entity called “Acmeda” in or about the years 2000 to 2004, which continued to that day.

Mr Lava, the CEO of Damorgold and Vertilux, had given evidence of the existence of an exclusive licence arrangement between the two Applicants. His evidence was that he had executed the Licence Agreement in his capacity as a Director of both Damorgold and Vertilux, and that the terms of the oral arrangements were identical to the written agreement. The evidence was that the arrangement had existed since at least 1 January 2006 and that the relevant business structure had been in place since 1996. Mr Lava also gave evidence indicating that Acmeda’s permission to sell in Australia was nothing more than a sub-licence granted by the exclusive licensee, Vertilux.

The Court favoured his evidence and the submissions of Damorgold and Vertilux and found that Vertilux was the exclusive licensee of the Patent, and had the ability to start the proceedings. As far as the Court was concerned, the fact that there was no written consent given to Vertilux to sub-license to Acmeda as envisaged by the terms of the Licence Agreement did not detract from this finding, having regard to the position and involvement of Mr Lava as a Director of both Damorgold and Vertilux.

Take Home Message

Oral patent licence agreements remain recognised in Australia. However, in the event that the relevant Patent requires enforcement, it is worth remembering that if the exclusive licensee wishes to start patent infringement proceedings in Australia, it may be required to prove that they have standing. As such, a written exclusive licence agreement is preferable.

Furthermore, while there are no penalties for failing to register a licence on the Patent Register, it is recommended to do so given it has the advantage of providing prima facie proof of an exclusive licensee’s standing to sue for patent infringement. To avoid disclosure of any confidential commercial information, it is common practice in Australia to either submit a reacted copy of an exclusive Licence Agreement to IP Australia, or to submit a separate, short form Agreement which confirms the existence of the exclusive Licence Agreement. This is because the information contained in any documents submitted to IP Australia is subject to the Freedom of Information Act 1982 (Cth) and may ultimately become available to third parties.

Finally it is important to note that the exclusivity of any recorded Licence Agreement may still be challenged during patent infringement proceedings and the patentee and/or exclusive licensee put to the proof. As such, it is generally preferable to record a separate, confirmation of license agreement which clearly sets out the rights of the licensee, including its exclusivity, and the date on which the licence commenced.

Stem cell patentability: the European and Australian positions compared

Dr. Victoria Longshaw, Dr. Jim Onishi and Dr. Nigel Parker

The challenges of patenting inventions in various biotechnological fields have drastically increased around the world over the past year. However, the recent changes to patentable subject matter have not been uniformly applied in all patenting jurisdictions. For example, while the permissive approach to patenting isolated DNA is similar in both Europe and Australia, the approach to patenting inventions using stem cells, or inventions that are derived from stem cell material or the use of stem cells, is very different.

In Europe, the approach to patenting of inventions involving stem cells is governed by the exclusion under Directive 98/44/EC Article 6 of inventions where their commercial exploitation would be contrary to ordre public or morality. This includes any uses of human embryos for industrial or commercial purposes where implementation requires the prior destruction of human embryos or their prior use as starting material.

In contrast, the Australian approach to patentability of inventions involving stem cells is governed by the exclusion in terms of Section 18(2) of the Patents Act 1990, which states that human beings, and the biological processes for their generation, are not patentable inventions in Australia.

Thus, subject matter involving the generation of a human embryo cannot be patented in Europe or Australia. However, while actions resulting in the destruction of a human embryo will preclude patentability in Europe, such actions will not necessarily preclude patentability of inventions involving stem cells in Australia.

The European position

Following the Decision in Oliver Brüstle v Greenpeace eV [2012], the Court of Justice of the European Union (CJEU) ruled that, in terms of Article 6(2)(c) of Directive 98/44/EC, an invention is not patentable in Europe if its implementation requires the prior destruction of human embryos or their prior use as starting material.

In International Stem Cell Corporation v Comptroller General of Patents [2013], the United Kingdom Patents Court was asked to consider whether this exclusion to patentability encompassed parthenogentically-activated oocytes which are incapable of developing into a human being (“parthenotes”). Following a request for a preliminary ruling from the High Court of Justice of England and Wales, Chancery Division, the Court of Justice delivered its opinion of Advocate General Cruz Villalón on 17 July 2014.

The patentability of inventions using parthenotes has been clarified in the opinion of Advocate General as not being included in the term “human embryos” as defined in Article 6(2)(c) of Directive 98/44/EC on the legal protection of biotechnological inventions. Therefore, unfertilised human ova whose division and further development have been stimulated by parthenogenesis, that are not capable of developing into a human being and that have not been genetically manipulated to acquire such a capacity are not considered by the Advocate General to be included in the term “human embryos.

The High Court of Justice of England and Wales has yet to hand down its Decision in the matter. If this Court follows the opinion of Advocate General, an invention may be considered patentable in Europe even if its implementation involves the use of parthenogentically-derived stem cells or their prior use as starting material.

The Australian position

In terms of Section 18(2) of the Patents Act 1990, human beings, and the biological processes for their generation, are not patentable inventions in Australia. Furthermore, in terms of Section 18(3), an innovation patent cannot be obtained which claims plants or animals, or the biological processes for the generation of plants and animals.

In Fertilitescentrum AB and Luminis Pty Ltd [2004], a Decision by the Deputy Commissioner of Patents considered that the prohibition of “human beings” is a prohibition of patenting of any entity that might reasonably claim the status of a human being, and that a fertilised ovum and all its subsequent manifestations are covered by this exclusion. The prohibition of “biological processes for (the generation of human beings)” was considered to cover all biological processes applied from fertilisation to birth only insofar as the process is one that directly relates to the generation of the human being.

The Australian Patent Office, IP Australia, accepts the meaning of “human being” as set forth in Fertilitescentrum AB and Luminis Pty Ltd [2004], and considers that human stem cells and human stem cell lines per se are patentable because these cells are not considered to be human beings or potential human beings within the meaning of Section 18(2).

Human embryos, however, are considered to be human beings within the meaning of Section 18(2). Accordingly, human embryos and processes for generating or culturing human embryos for any purpose, including the harvesting of stem cells, are not patentable in Australia. This exclusion therefore extends to all means of generating human embryos such as the generation of embryos by nuclear transfer, altered nuclear transfer, activation of gametes and parthenogenesis.

As yet, there has been no challenge made to this exclusion with regards to the generation of human embryos by parthenogenesis. However, while not binding in Australia, the opinion of Advocate General of the High Court of Justice of England and Wales may persuade an Australian Court in the event that this aspect of the patentability exclusion of Section 18(2) is challenged in Australia.

Take Home Message

The approach to patenting inventions using stem cells, or derived from stem cells, is very different in Europe and Australia.

In Europe, inventions involving the use of parthenogentically-derived stem cells or their prior use as starting material, may yet be considered patentable. However, any invention which requires the prior destruction of human embryos or their prior use as starting material remains unpatentable.

In Australia, while human stem cells and human stem cell lines per se are patentable, claims that are directed to human embryos and processes for generating or culturing human embryos for any purpose, including the harvesting of stem cells, remain unpatentable.

Proving Lack of Inventive Step in light of the Common General Knowledge

Dr. Victoria Longshaw and Dr. Jim Onishi

In Garford Pty Ltd v DYWIDAG-Systems International Pty Ltd [2014] APO 37, an Opposition Decision recently handed down by the Australian Patent Office, the Hearing Officer provided some useful comments on proving lack of an inventive step in light of the Common General Knowledge (“CGK”) in Australia.

The Case

The case involved an Opposition to Australian Patent Application No. 2009329824 (“the Application”), in the name of DYWIDAG-Systems International Pty Ltd (“the Applicant”), which claimed an invention relating to an apparatus and method for manufacturing a cable bolt. Cable bolts are typically used to secure the roof or walls of an underground mine, tunnel or other ground excavation.

Garford Pty Ltd (“the Opponent”) opposed the Application on the grounds of lack of novelty, lack of inventive step, secret use, and lack of clarity. However, at the Hearing, the Opponent indicated that its focus was on the grounds of lack of inventive step, lack of novelty for claims 18 and 19 only, and lack of clarity.

It was held that Claims 18 to 23 lacked fair basis, on a point which was initially identified by the Hearing Officer. The Opposition was otherwise unsuccessful. The Applicant has been given 60 days to file amendments, and no costs were awarded since the prevailing ground was identified by the Hearing Officer.

Lack of Inventive Step vs Common General Knowledge (“CGK”)

Of interest were the comments provided by the Hearing Officer relating to the unsuccessful lack of inventive step arguments submitted by the Opponent.

The Hearing Officer considered the principal problem with the Opponent’s submissions on this ground was that the evidence provided did not establish “enough” common general knowledge to discharge the Opponent’s onus.

The Opponent argued that accumulators and their use in controlling tension in processing of continuous strips or lengths of material was CGK at the priority date. However, the question remained whether every other element specified in the claimed method of manufacturing a cable bolt by using the apparatus was also part of the CGK. The Opponent argued that they were, and directed the Hearing Officer’s attention to the “Background to the Invention” section of the Specification of the Application in suit, in which prior art apparatus had been described by the Applicant.

However, the Hearing Officer refused to regard the information contained in the “Background to the Invention” section as a statement of CGK and stated that:

“If an invention lacks an inventive step in light of the common general knowledge, it does not follow that the invention is common general knowledge…”

It was further considered that even if every individual element of the claimed invention was well-known, an Opponent will still need to provide evidence that the skilled person would have selected those features and combined them in the claimed way to obtain the claimed invention (as a matter of routine).

The evidence submitted by the Opponent was considered to be tainted by hindsight as the Experts giving evidence started their analysis with the “Background to the Invention” provided in the Specification and being told that the apparatus described in the Opponent’s Patent (the prior art in consideration) was inefficient and redesign of that device was the problem to be solved.

The fact that the Experts were given the prior art document by the Opponent and informed of the deficiencies of the prior art apparatus as well as the problem to be solved made this case difficult to the Opponent. This was because it could not be demonstrated that the prior art document would be ascertained, understood and regarded as relevant, as required under Inventive Step considerations, and furthermore, it was questionable whether the prior art document would be relevant when in fact the prior art apparatus had the same problem that the opposed Application sought to solve.

The Claims of the Application were thus considered to be inventive in light of both the common general knowledge and the prior art submitted in support of the Opponent’s arguments.

Take Home Message

This case is a useful reminder of the nature of the evidence that must be submitted in Australian Patent Opposition Proceedings to prove the lack of an inventive step in light of the CGK. Not only must every feature of an apparatus, or step in a method, be well known in Australia as at the priority date, but the combination of those features by a skilled person must have been obvious.

Furthermore, it is also necessary to bear the strict Australian evidentiary requirements in mind when submitting expert evidence in patent matters in order to avoid any use of hindsight.

Documents incorporated by reference do not provide basis to support a priority claim in Australia

Dr. Victoria Longshaw and Dr. Nigel Parker

A recent Patent Opposition Decision handed down by the Australian Patent Office clarifies the requirements of incorporating references into priority documents in lieu of disclosure.

The Case


In Christopher John Carter v Cristal Metals Inc. [2014], Cristal Metals Inc. (“the Applicant”) had obtained acceptance of Australian Patent Application No. 2006302273 (“the Application”) for an invention relating to a titanium metal powder having submicron titanium boride substantially uniformly dispersed within it. The claimed invention used the Armstrong process, although this was not specifically described in the Specification.


Claim 1 of the Application was directed to the titanium metal powder of the invention, and was defined in terms of the process steps used to produce it. However, in lieu of explicit description of the Armstrong process, the Specification incorporated by reference three United Stated patents that disclosed the Armstrong process.


Christopher John Carter (“the Opponent”) opposed the Application in the basis that the Claims were not fairly based. Other Grounds of Opposition included lack of novelty, lack of an inventive step, lack of clarity, and not a manner of manufacture.


This matter was considered in terms of the applicable law in force before 15 April 2013. That is, the grounds of opposition were considered according to the provisions of the Patents Act 1990 before amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.


Lack of entitlement to priority date claimed

Of interest in this case was the challenge by the Opponent to the Applicant’s claim of a priority date of 6 October 2005, which was the date of filing of the priority document, United States Patent Application No. 60/724,166. It was argued that there was no real and reasonably clear disclosure in the priority document of the process steps of the Claims of the Application.


Under Australian Patent Law applicable to the Application, a Claim of a Convention Application, if fairly based on matter disclosed in a related “basic application,” would take the priority date that the Claim would have had if it had been included in the basic application. Furthermore, under the previous legislative regime, the Claims of a Specification had to be fairly based on the matter described in the Specification. This requirement has been interpreted by Australian Courts as requiring that there be a real and reasonably clear disclosure of what is Claimed.


In this case, the Hearing Officer considered that the Armstrong process was not described in the priority document. It was held that, for priority purposes, matter relating to the process to produce the alleged invention should be present in the priority document itself. The reliance on the citation of three United States Patents by way of disclosure of the Armstrong process was not considered to be a disclosure as required by Section 40(3) of the Patents Act 1990.

 The Claims of the Application were therefore considered to lack entitlement to their claimed priority date. The Hearing Officer also regarded several Claims of the Application to lack novelty and an inventive step.

Take Home Message

 It is worth bearing in mind that the approach of incorporating the disclosure of external documents by reference into a Provisional Patent Application may not always be considered to meet the fair basis patentability requirement of a related Australian Application that was filed under the previous Patent Act. This is particularly the case where Provisional Patent Applications have been filed in jurisdictions other than Australia.


Furthermore, recent legislative changes to the Patents Act 1990 by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, now require a Provisional Specification to 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,” in order for a Claim to appropriately claim priority from that Provisional Patent Application.


Applicants intending to file Convention and PCT National Phase Applications in Australia would be well advised to include a direct description of any relevant material in the Specification of a Provisional Patent Application filed in another country as basis for subsequent Claims, rather than rely on the incorporation of documents by reference.

Clarity: the Achilles’ heel of Patent Applicants in Australian Opposition Proceedings

Dr. Victoria Longshaw and Dr. Elizabeth Houlihan

The Australian Patent Office recently handed down a Decision in Patent Opposition Proceedings which illustrates the difficulty faced by Applicants in countering opposition grounds based on lack of clarity.

In Innovia Security Pty Ltd v Giesecke & Devrient GmbH [2014], Innovia Security Pty Ltd (“the Opponent”) successfully opposed Australian Patent Application No. 2005274464 (“the Application”) on the grounds that Claim 1, and the Claims dependent thereon, were unclear. The Hearing Officer concluded that these Claims were so unclear that no assessment of other grounds of opposition could be made on those Claims. Claims 4 to 24 were considered to be valid.

This Decision is relevant to Patent Applicants who may need to defend Patent Claims from lack of clarity attacks in Australia. It is also relevant to Patent Applicants filing Patent Applications in Australia which do not include technical definitions in the Specification.

The invention claimed

The Application involved technology used in providing authentication marks for value papers having a transparent substrate, such as banknotes which include transparent windows with security features and elements useful for verifying the authenticity of the banknote.

Giesecke & Devrient GmbH (“the Applicant”) had claimed a security element for securing security papers, value documents and the like, having a transparent or translucent substrate which is provided with an authenticating mark including one or more layers composed of liquid crystal material present in the form of patterns, characters or codes.

The authenticating mark, in transmitted light, was described as imparting a first optical impression and displaying patterns, characters or codes. However, in reflected light, the authenticating mark was described as imparting a second optical impression which differed from the first optical impression. The authenticating mark therefore displayed an optically variable effect, and either the appearance of the patterns, characters or codes of the authenticating mark were significantly changed in the second optical impression or they completely disappeared.

The Application was opposed on the grounds of lack of novelty, lack of an inventive step, that the invention claimed was not a manner of manufacture, and lack of clarity.

The Submissions

Interestingly, at issue was the meaning of the phrase “light reflected from a highly absorptive, dark background surface” which was cited in both Claim 1 and Claim 4.

The Hearing Officer initially interpreted this phrase to mean that a dark background was used to remove any ambient transmitted light so that only the light reflected off the security device could be seen. The Hearing Officer regarded this understanding of the phrase to be in accord with the Description.

However, the Opponent challenged this interpretation and argued that it was unclear how there can be any light reflected from a highly absorptive, dark surface.

In answer, the Applicant amended the Claims and then submitted that this phrase in Claim 1 meant viewing in a low level of light reflected from a dark background, as even dark backgrounds reflect some light. With regards to the meaning of the phrase in Claim 4, the Applicant submitted that it should be interpreted as viewing light reflected from the security element being held against the dark background surface.

The Hearing Officer held that the Claims in conjunction with the Applicant’s submissions in regards to the Claims, made it impossible to ascertain the invention that is being claimed. No assessment of other grounds of opposition was carried out with regards to Claims 1 to 3 and they were held to be invalid for lack of clarity.

The Applicant is permitted to file a request to amend the Claims within sixty (60) days from the date of the decision.

Take Home Message

It is standard practice in the drafting of Patent Specifications to ensure that the meaning of features and/integers cited in a Claim are consistent throughout the Specification. However, it is worth bearing in mind that any ambiguity in the meaning of phrases used in different Claims could prove to be an Achilles’ heel of what could otherwise have been considered to be a novel and inventive invention.

Furthermore, while there is no file estoppel in Australia, submissions relating to the meaning of specific phrases in a Patent Specification that are filed in a Patent Opposition may obstruct later amendment of the Claims. The amendment of accepted Patent Claims in Australia is not guaranteed and is at the discretion of the Commissioner, or his or her Delegate.

Furthermore, an amendment filed after acceptance is not allowable if it, inter alia, would result in a Claim that does not in substance fall within the scope of the claims of the specification before amendment; or if it would result in the specification failing to 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.

Thus, even when using ordinary phrases based on their plain English meaning, it remains important to ensure consistency in the use of these phrases throughout all of the Claims.


The new “support” requirement for patentability is one of the many changes brought into Australian Patent Law by the Intellectual Property Laws Amendment act (Raising the Bar) 2012 (Cth) on 15 April 2013. It is intended to raise the standards of Australian Patents by curtailing the scope of inappropriately broad claims.

However, the importation of this European-type support requirement into Australian patent law may have well opened the door to a Trojan horse. Infected with conflation issues, the European approach to considering what constitutes adequate support for a patent claim does not offer a coherent example that can be practically applied by the Australian Patent Office or by the Australian Courts.

Without any guidance on how to distinguish between the two requirements, Australian patent examiners are likely to inappropriately raise objections for both lack of support and lack of sufficient disclosure, based on the same reasoning. Similarly, parties attempting to oppose patent applications or revoke registered Patents in Australia are now faced with establishing by trial and error the nature of the particularson which to adequately base an allegation of lack of support.

Instead of reducing legal uncertainty, the harmonisation of Australian Patent Law with its European counterpart has spawned new obstacles in the practical application of patentability requirements in Australia.

The incomplete harmonisation of Australian patent law with that of Europe

The focus of the Raising the Bar reforms was to align many of the internal validity grounds with their counterparts in Europe and the United States. The changes were aimed at ensuring that only Australian Patents with appropriate claim scope are allowed to proceed to grant. However, the approach has been piecemeal rather than holistic, with attention focused more on patentability requirements during examination than on the corresponding grounds of opposition and revocation. The result, at least with respect to the support requirement, is that, unlike in Europe to which Australian law has ostensibly been harmonised, the ground of “lack of support” is now available in Australia both as a ground in opposition proceedings and as a ground in revocation proceedings.This support requirement will now play a greater role in Australian patent law than it has previously played in Europe.

The effect of replacing “fairly based” with “support” in Australia

Previously, the claims of an Australian patent were required to be “fairly based” on the matter described in the specification. In practice, the claims were regarded as fairly based if at least one embodiment, falling within the scope of the claims, was described in the Specification. It was not considered to be a requirement to describe every embodiment falling within the scope the claims.

Although the term “fairly based” is not defined in the Patents Act 1990, the meaning of this previous requirement was comprehensively assessed by the Australian High Court in 2004 in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd.[1]In this case, the High Court clarified the test as requiring “a real and reasonably clear disclosure” having regard to the description of the invention in the specification as a whole. Since then, a large body of case law has developed in which the fair basis test has been meticulously applied by both the Australian Patent Office and the Australian Courts.

The new European-type support requirement which has replaced the previousfair basis requirement is an unknown quantity. It is also not defined in the Patents Act 1990 and it has been left to the Australian courts to provide both an interpretation of the new requirement anddevelop a new test for it. In the absence of any guidance as to the meaning of “support”, Australian patent examiners are likely to follow a European approach to examining Australian Patent Applications filed after 15 April 2013. So how does Europe approach the issue?

The imported European support requirement is infected with conflation issues

In Europe, an objection of lack of support in examination proceedings is considered as related to an objection of sufficient disclosure of the invention, the reasoning being that the disclosure of the invention is insufficient to enable a skilled person to carry out the alleged invention over the breadth of the claims. The requirements of sufficient disclosure and support are both considered to reflect the principle that a patent claim should be commensurate with, or be justified by, the technical contribution to the art.

The Guidelines for Examination published by the European Patent Office (EPO) states that the extent to which an invention is sufficiently disclosed is highly relevant to the issue of support, such that whether the objection is raised a lack of support or as insufficient disclosure is regarded as unimportant in examination proceedings.

Importantly, although objections on the grounds of lack of support and insufficient disclosure may be raised during examination proceedings in Europe, only the latter ground is available as a ground of opposition and revocation. As such, the ground of lack of support has not been extensively considered by European tribunals and courts and any test for the support requirementhas been slow to develop.

Judicial consideration of the ground of lack of support has occurred but usually through a conflated vehicle involving the ground of lack of sufficient disclosure. In the EPO Technical Board decisions in EXXON/Fuel Oils and GENENTECH I/Polypeptide Expression, the EPO Technical Board expressly conflated the operation of the EPCarticle requiring support for the claims with the EPC article requiring a sufficiently clear and complete disclosure, and regarded both requirements as embracing the same principle. This has entrenched the conflation of the two concepts of sufficient disclosure and support in European law.

The situation in Australia is quite different. Unlike its European counterpart, the ground of lack of support may be raised during prosecution of a patent application as well as during opposition proceedings and revocation proceedings. However, unlike the previous “fair basis,” requirement in Australian law, which has been intensively scrutinised by the Australian Courts, the newsupportrequirement is yet to be interpreted by the judiciary.Any test for the new support requirement in the Australian context awaits development by the Australian Courts. Such judicial development must necessarily be carried out without recourse to any persuasive body of European Technical Board case law.

So, how will the Australian Courts resolve patent disputes involving the ground of lack of support? Will the new support requirement suffer the same fate as its European counterpart and become conflated with sufficient disclosure in Australia too?

A Frankenstein test for the new support requirement in Australia could develop

According to the Examination Memorandum, the new support requirement is intended to encompass two conceptual aspects of support. Not only must the Description provide a basis for each Claim, but the scope of the claims must not be broader than is justified by the extent of the Description, Drawings, and contribution to the art.

It is possible, although unlikely, that the Australian Courts may develop a literal quantitative test for measuring the extent to which a patent claim in Australia is supported by the Description, by comparing each claim with the number of specific embodiments provided in support of it. However, while such a literal test may be relevant in instances of Markush claims and selection patent claims, its application would be limited by the merits of the case. Any limitation of patentability requirements to the technology involved would contravene TRIPS norms.

It is more likely that the Australian Courts will develop a qualitative test. However, Australian law-malers and the Australian Cuorts have historically disagreed on the issue of support for patent claims. While a legislative drive to a full-scope requirement of support for patent claims has resulted in the Raising the Bar reforms, the judiciary has historically been opposed to just such a development.In the leading decision on “fair basis,”, Lockwood supra, the proposal of full-scope support as the standard for fair basis of an Australian patent claim was forcefully rejected by the High Court, which instead lay down a test of form rather than substance. Accordingly, the claim was regarded by the High Court as fairly based if there was matter included in the Specification which demonstrated that the invention disclosed was not narrower than that which was claimed.

Realistically speaking, it is likely that the judiciary will still be of the same mind when faced with a precedent case for establishing a standard support in the Australian context. In light of the strong opinions many Australian judges are known to have on the subject, recourse may be had to the considerable body of Australian case law developed for the related, albeit superseded, requirement of “fair basis”. As such, it is possible that new life may be breathed into the old Australianconcept of “real and reasonably clear disclosure” if the courts are able to link this concept with the new requirement of support. We may therefore be heading towards, not so much a European interpretation of the new support requirement, but a Frankenstein-like development of a new test within the Australian context..

Take-home message

The support requirement is common to examination proceedings of patent applications in both Australia and Europe. However, it plays a very different role in third-party proceedings against the grant of patent rights in these countries.

In their attempts to redress what is perceived as weak patentability standards, Australian law-makers may well have unintentionally imported into Australian law, undesirable aspects of legal uncertainty that havepreviously developed in European practice and which remain unresolved. In particular, the importation of the European support requirement into Australian law may have unintentionally brought with it a conflation of this requirement with a requirement for sufficient disclosure.

Practical steps that Patent Applicants can take in the meantime to satisfy the new support requirement

Australian Patent Examiners intend to follow a European approach in examining Australian patent applications for support. It is therefore likely that support requirements will be confused with sufficiency of disclosure requirements, resulting in a simultaneous raising of objections for both lack of support and lack of sufficient disclosure. Such objections may be most appropriately addressed in a similar manner to the approach taken in addressing corresponding European objections.

Patent Applicants with co-pending applications in Europe and Australia may be well advised to delay responding to any Australian lack of support objections until the outcome of responses to corresponding objections in Europe is known. If similar objections are successfully addressed in Europe, then the drawing of an Australian Examiners attention to this circumstance may be sufficient to overcome similar lack of support objections raised in Australia. However, such an approach must be balanced with the cost implications of delaying a response to an Australian Examination Report as late response fees are incurred for any responses filed after 12 months from the date on which a first Examination Report issues.

Patent Applicants of an Australian Patent Application, for which there are no corresponding applications in Europe, may need to consider taking greater care when drafting the Specification, so as to include a description of as many embodiments as possible across the scope of the claims. If this is not possible, then it may be worth considering the filing of one or more divisional applications directed to narrower claims which cover commercially valuable embodiments of the invention and which an Australian Examiner is more likely to regard as meeting the new support requirement.

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