The following section will discuss:
The new law in Schedule 1 requires that the patent specification must:
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.
The language is taken directly from the corresponding provision in the United Kingdom legislation and it is quite clear that the intention is that this provision is to be interpreted in Australia as it has been in the UK. There is an expectation that to meet this requirement, the specification should enable the claimed invention to be produced across the full scope of each claim.
The best method of performance requirement remains.
Finally, under the new law, a similar enablement requirement also applies to provisional specifications. However, there remains no need to describe the best method in a provisional specification.
Under the new law, applicants are not allowed to add new matter that goes beyond the disclosure contained in the specification at its filing date, except to correct a clerical error or obvious mistake. It follows that the relevant test as to whether amendments are allowable is no longer dependent on claim scope but rather on whether the amendment changes the description contained in the specification as filed.
The provisions of Schedule 1 are quite dramatic in the sense that they establish a class of new Act patents to which the higher validity standards required by the new law will apply, and old Act patents to which relatively lower validity standards established by the pre-amendment or old law will apply. In doing so, these provisions have effectively swept aside case law for new Act patents that has been developed by the Australian courts over the last 100 years and brought in new grounds that have not yet been considered by the courts.
In more detail, old Act patents, (ie those patents or applications that had examination requested before 15 April 2013) will be assessed on the familiar written description ground that was well understood to merely require a patent specification to permit the skilled worker to produce something within each claim. Fair basis will also continue to apply, and these patents will not be revoked for lack of enablement.
Further, regarding amendment, the old law provides that the invention needs to be fully described at grant, but not necessarily earlier, allowing the applicant to correct an inadequate description of the best mode of the invention after filing, provided the amendment would not result in the specification claiming matter not disclosed in the specification as filed.
In contrast to the above, new Act cases will be assessed on grounds that have not yet been applied in the Australian courts. Although the intention is that these grounds are to be applied as they have been in the UK, we think it far from certain that the outcomes seen in Australian courts will be the same as in these jurisdictions.
In these circumstances, we think that to the extent that the Schedule 1 provisions introduce uncertainty as to the outcome of validity assessment on these grounds, that uncertainty is most likely to be seen before the Australian courts. Given the tendency of the Australian patent examiners to follow the prosecution of foreign counterpart applications in US and Europe, we think it likely that outcomes before the Australian Patent Office should be more certain—that is, if there is a problem in Europe on enablement for a given claim, one should reasonably expect the same problem to arise on that claim in Australia.
The new law established under Schedule 1 increases the requirements for a patentable invention by expanding the prior art base and the common general knowledge relevant to testing obviousness.
The effect of the law will most likely be to bring the Australian requirements regarding obviousness into line with other patent systems. It will not demand a higher or additional threshold to those applying in other jurisdictions.
Therefore the outcome is likely to be that allowed Australian claims will bear more resemblance to foreign counterparts with respect to scope.
The law applies to all patents/applications which are filed on or after 15 April 2013; or for which examination is requested after this date. It does not apply to patents/applications for which examination was requested prior to this date.
The intention of the new law is to raise the inventive step standard by expanding the type of information that can be considered in a consideration of inventive step. According to the new law, inventive step is to be tested having regard to:
Like the Schedule 1 provisions relevant to patent specifications discussed above, the provisions here will also establish a class of new Act patents to which the higher validity standards will apply, and old Act patents to which relatively lower validity standards established by the pre-amendment or ‘old law’ will apply.
In more detail, the common general knowledge relevant to old Act patents will remain limited to that as it existed in Australia prior to the relevant priority date. Further, the prior art base relevant to these patents will remain limited to that information that would have been ascertained, understood, and regarded as relevant’ by the skilled worker.
The new law is expected to raise the bar to validity on the inventive step ground. Having said this, it is not crystal clear that the threshold is now at the same level as that set in the US, EP or other key jurisdictions. There are two important considerations.
First, the removal of the ‘ascertained, understood and regarded as relevant’ prior art carve out in the new law is not intended to result in all prior art information being axiomatically available for obviousness. We think that while a skilled person will be deemed to be aware of all publicly available prior art information, such information may still be excluded from obviousness considerations if it can be shown that the skilled person could not have appreciated its relevance.
Second, the requirement to assess the claimed invention in light of the common general knowledge is to remain. Even with the expanded prior art base, therefore, obviousness is unlikely to be found where it can be shown that the common general knowledge teaches away from the teaching of the prior art.
It seems reasonable to expect that Australian applicants will find obviousness more challenging, although having said this the Patent Office’s practice of relying on the prosecution of corresponding US/European patent applications may result in there being limited real change in this regard.
We think that the real impact of the new law is likely to be felt far more keenly in opposition and revocation proceedings.
The new law introduces a new requirement in respect of inventions of new Act patents to which the law applies. The new requirement is that a claimed invention must be ‘useful’. This requirement will not apply to patents or applications to which the old law applies, namely the old Act patents being those cases in which examination was requested before 15 April 2013.
According to the new law, an invention is to be taken not to be useful unless a specific, substantial and credible use for the claimed invention is disclosed in the complete specification. Further, the disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.
It is clear that the relevant words are to be interpreted consistent with the US approach, and the relevant Australian legislative materials consider the following interpretations as appropriate:
It is important to note that the specific, substantial and credible use must be disclosed in the specification. According to the legislative materials this can take the form of an explicit disclosure, or if the skilled person could appreciate the use, with their background knowledge in the art and without undue burden then the disclosure need not be explicit.
In practice it is expected that this new law will not have a significant impact on the majority of patent applications and how they are drafted. The amendments will show their usefulness by eradicating the claiming of speculative inventions, thereby strengthening the requirement that patented inventions are useful.
While the new law does not apply to old Act patents, it is important to remember that inventions of both new and old Act patents are subject to the requirement that they have utility, ie that the claims actually achieve what is promised by the patentee in the specification. The Australian courts have been quite clear that where a single claimed embodiment does not meet this requirement, the relevant claim is likely invalid.