First test for new ‘Disclosure’ and ‘Support’ standards points the way to the future of patent specifications in Australia
David Loch, Fisher Adams Kelly Callinan
In patent regimes around the world, the conferring of exclusive legal rights to an invention has long been part of a reciprocal exchange of benefits between the public and the inventor – in return for such rights, it is required that the inventor disclose how to recreate their invention, and it is expected that they do not try to claim more than their real contribution to knowledge in that field.
In Australia, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 altered the standards by which these disclosure and support requirements are tested. To an extent, these new tests aligned Australia’s approach to the disclosure and support requirements in other jurisdictions, such as the UK and Europe.
Until recently, the new tests had not been considered in a published Australian Patent Office (APO) decision, so it remained unclear how the standards would be applied in practice. However CSR Building Products Limited v United States Gypsum Company  APO 72 covered both disclosure and support requirements and is explored in this article. The relevant part of the case considered whether claims broadly directed to low density and fire resistant gypsum panels were adequately enabled and supported by the description laid out in the patent specification.
Based on the commentary provided with the 2012 Act, the intention of the change in law was that Australia’s new disclosure requirements be afforded the same effect as the corresponding provisions of UK legislation and the European Patent Convention.
Therefore in ascertaining exactly how to test whether the patent specification adequately disclosed the invention claimed, the Delegate in the present APO decision cited an England and Wales Court of Appeal case (Novartis AG v Johnson & Johnson Medical Limited  EWCA Civ 1039). In that case the “heart” of the disclosure test was defined as: “Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?”
The Delegate noted that it is permissible to leave need for a reasonable amount of trial and error to reach the precise parameters of an invention. However, the disclosure of the specification, with or without the common general knowledge, must be adequate so as to lead a skilled person necessarily and with certainty towards the invention as claimed.
The Delegate then set out the practical steps necessary to assess whether or not a patent specification adequately discloses the invention claimed. The steps that should be followed are:
- examine and interpret the claims to determine the scope of invention as claimed,
- examine and interpret the description to determine what it discloses to the person skilled in the art (PSA), and
- decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims – i.e. a description which would lead the PSA to be able to recreate the claimed invention.
For the present APO case, the invention recited in Claim 1 was a gypsum panel having a gypsum core containing high expansion particles encased by two cover sheets. The claims further stated that the resultant gypsum sheet must be both fire resistant and light-weight.
There are however, more than one type of high expansion particles, and the specification only described one possible example – high expansion vermiculite. The Delegate therefore considered whether the invention as claimed was fully disclosed, since the claim was described in general terms – any high expansion particles – while only one example was described in the specification.
In this case, notwithstanding the specification only exemplifying high expansion vermiculite, the Delegate considered that the skilled person could reasonably be expected to prepare such panels using non-vermiculite particulates without undue burden.
However, the claims also specified that the gypsum sheet must be fire resistant, while a gypsum panel created using the general method described in the specification can result in fire resistant panels, or non-fire resistant panels depending on the specific parameters used. The specification laid out a significant number of different gypsum panels in the examples section which were tested for fire resistance, as required by the claims. While a number of these passed the fire resistance tests, according to certain industry standards, there were a similar number of examples that were shown not to be fire resistant.
In light of this, the Delegate considered that the specification failed to provide clear guidance and certainty to the skilled person as to what combination of the various manufacturing parameters would be successful with respect to guaranteeing the production of gypsum panels with the full combination of properties, including fire resistance, as required by the claims.
The Delegate noted that if the additional work required to adjust the composition of the panels to meet the parameters of the claims could be described as reasonable trial and error then the specification would be considered to provide an adequate disclosure. However, where the additional work represented an undue burden then the specification would be determined to provide an inadequate disclosure.
In considering the expert evidence, the Delegate concluded that the significant monetary expense required for testing of panels to determine whether or not they had the desired properties, especially fire resistance, represented an undue burden. The Delegate therefore held that the specification failed to meet the standard of disclosure required by section 40.
In drawing on the European Patent Office’s Guidelines for Examination, the Explanatory Memorandum for the Raising the Bar Act notes that the term ‘support’ requires, firstly, that there must be a basis in the specification’s description for each formal claim, and, secondly, that the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art. Given the above, it is perhaps unsurprising that the Delegate drew quite heavily on concepts derived from European and, more specifically, UK case law.
In particular, the Delegate cited a decision from the Technical Board of Appeal in Fuel Oils/EXXON (T409/91)  OJ EPO 653 in which it was stated that:
“this [support] requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified”.
As such, the Delegate was of the opinion that to be considered adequately supported, and therefore permissible, in Australia the scope of the claims must be commensurate with the invention’s technical contribution to the art. Therefore, like Europe, the elements of an invention protected in law by a patent in Australia should correspond to and be justified by the ways in which the invention has advanced the relevant field of knowledge.
In citing the general approach with respect to the question of support, as stated in Schering Biotech Corp.’s Application  RPC 249, the Delegate went on to propose that the following steps should be taken when assessing Australia’s new support provisions:
- examine and interpret the claims to determine the scope of the invention as claimed,
- examine and interpret the description to determine the technical contribution to the art, and
- decide whether the claims are supported by the technical contribution to the art.
In determining what defines an invention’s technical contribution to the art, the Delegate cited Lord Neuberger of Abbotsbury in Generics (UK) Ltd v H Lundbeck A/S  RPC 13, who noted that: “the technical contribution can often be equated with non‑obvious novelty – what is new to the art and not obvious is really another way of identifying the technical contribution.”
As part of this, particularly relevant in this case, it may be necessary during examination to determine whether the invention’s technical contribution to the art as described in the specification – i.e. what is new and not obvious about it – is a general principle which could be applied to many different specific manifestations in the future, thereby supporting a broader claim scope, or if what is new relates only to the specific examples or embodiments provided in the specification. The Delegate cited Lord Hoffman in Biogen Inc v Medeva plc  RPC 1:
“Thus if the patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect. On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them.”
In the present case, the independent claims were considered to be broadly directed to low density gypsum panels that contain high expansion particles and exhibit fire resistant properties. The Delegate, however, found that what was disclosed in the specification had advanced knowledge in that field only to the extent that it was now known that high expansion particulates can be used to produce a low density and fire resistant gypsum panel under certain conditions but may not always do so.
Since a number of the example gypsum panels provided in the specification did not exhibit fire resistant properties there was no general principle disclosed in the specification to the effect that the inclusion of high expansion particulates would in fact guarantee a fire resistant gypsum panel would be obtained. As such, the claims were held by the Delegate to be broader than their technical contribution to the art as described in the specification – this contribution being largely limited to the actual examples which provided a fire resistant panel, and hence not supported by the specification.
Although it may be some time before these new disclosure and support standards receive judicial review by Australia’s Federal Court, the present decision highlights how the Australian Patent Office in the interim will proceed with examining patent applications with respect to disclosure and support requirements.
If a patent applicant hopes to obtain broad claims then it is clear that a sufficient amount of information and examples will need to be provided within the specification to allow the person skilled in the art to work the invention, without undue burden or the need for inventive skill, across the full claimed scope. Requiring any significant time, effort or expense to be expended in trial and error in order to work out any of the claimed details of any aspect of the invention may not be acceptable.
Further it will be necessary for patent applicants in all cases to demonstrate in their patent specification that the technical contribution actually made by the invention described justifies the breadth of the claims they want to achieve.
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