The patent system is based on a bargain between innovators and the public: private monopoly in return for innovation and information. Newness and non-obviousness are key requirements for a valid standard patent, but they are not the only requirements. This article discusses the sufficiency and support requirements that aim to ensure that the innovation and information justify the monopoly.
When preparing a patent application, it is important to describe, or at least allude to, multiple versions of the invention and discuss the principles underlying the invention.
You can help your patent attorney prepare a better patent application by providing brief descriptions of alternative versions of your invention.
The coverage of a patent is defined by its “claims”. Generally speaking, a product or process is covered if it has each and every feature specified in a claim. The range of products and/or processes covered by a claim is referred to as an “invention”. The main text and figures of a patent application are called the “specification”. The specification is usually published about 18 months after the initial patent application is filed.
The Australian sufficiency and support requirements were heavily revised in 2013 by amending the legislation to introduce simple language that imported complex meaning from foreign case law.
The specification must sufficiently describe the invention to enable the ordinary, non-inventive worker (or team) in the relevant industry to make and use the invention without undue burden.
Before 2013, it was enough to enable a single version of the invention. The post-2013 requirement is tougher. It is as important as ever to describe, or at least allude to, multiple versions and to discuss the principles underlying the invention.
The post-2013 legislation explains that the “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 foreign case law explains that enablement over the whole width of the claim is called for, although this applies only across a relevant range and can be satisfied by a specification disclosing a “principle of general application” corresponding to the terms of the claim.
The decision discussed below explains, by way of example, that the coverage of a patent to “a new non-drip spout for a teapot which is shaped in a special way” does not have to be limited to any particular material because the material is not relevant, e.g. the patent is not invalid just because in theory it covers a teapot that can’t be made because it’s formed of a material that has not yet been invented.
In 2013, the support requirement replaced the old “fair basis” requirement. The old fair basis requirement could usually be satisfied by little more than copying the claims over to another part of the specification for internal consistency.
The post-2013 legislation explains that the claims must be “supported by matter disclosed in the specification”. Case law indicates 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. Whereas the assessment of fair basis was often a rather textual exercise, the assessment of support requires a more practical approach that often overlaps with the assessment of sufficiency.
As the Australian Patent Manual of Practice and Procedure explains:
“An objection for lack of support should be raised where the claims are broad and speculative, in that:
- the scope of the claims extends beyond the disclosure to encompass possibilities, the effects of which cannot readily be predetermined or assessed on the basis of what is described in the body of the specification; and
- the description gives merely an indication of the full breadth or scope of the invention, but no, or inadequate, directions of how to put it into practice across the full width of the claims.” (here)
A recent Court decision focused on a pair of related patents for hinges for glass-panelled doors, such as for pool fences.
The patented product
The patented hinge includes inserts 40, 60 to sit within profiled cut-outs at the edges of the glass panels 500. Insert 40 holds a pair of dampeners 100 to contact faces 64 as the door is closed. Positioning the dampeners in the cut-outs in line with the thickness of the glass reduced the overall thickness of the hinge. The dampeners are orthogonal to the hinge axis, but this orthogonality was not specified in the claims and the patent was held to cover a competitor’s hinge that had parallel dampeners actuated via cams.
The competitor’s product
So far so good for the patent holder, but things took a turn for the worse when the Court turned to sufficiency and support.
Whilst the coverage was not limited to orthogonality:
• the specification did not mention any other orientation;
• the Court considered orthogonality to be important because it was tied to the function of contacting the faces 64; and
• expert evidence indicated moving away from orthogonality would require a complete redesign.
The Court reasoned that the “the scope of the invention as disclosed and described [is limited] to a particular hinge mechanism in which the longitudinal dampener axis is more or less orthogonal to the hinge axis”, and went on to conclude that the claims fail on both the sufficiency and support requirements because they cover more than this.
So, the competitor won the day. They will be allowed to continue selling their hinges.
This case highlights that when preparing a patent application it is important to describe, or at least allude to, multiple versions of the invention and discuss the principles underlying the invention. In the glare of hindsight, the hinge patents may well have fared better if they had mentioned a parallel dampener version or at least alluded to other potential dampening arrangements.
A practical take-away
You can help your patent attorney prepare a better patent application by providing brief descriptions of alternative versions of your invention. These may well be other design options that you considered and discarded along the way. These alternatives are useful prompts to ensure that the claims cover all that they should, and can be dropped into the specification to support the claims and ensure the invention is sufficiently described.