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.

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