A recent Full Federal Court[1] decision[2] sheds light on what’s required for a patent specification to be drafted ‘with reasonable skill and knowledge’.

The Court rejected the notion that ‘the scientific justification for or substantiation of’ the original form of the claims must be known to the drafter and their instructor. On the other hand, the decision is not carte blanche for reciting arbitrary features and must be understood in view of the case-specific facts, including that:

• there was a scientific justification for the original form of the claim; and

• an earlier iteration of the Australian Patents Act applied (and differs from newer iterations in ways that may well be relevant).

Subsequent decisions may well hold that scientific justification and substantiation are required to draft newer patent applications ‘with reasonable skill and knowledge’.

Background

Whether damages are payable in respect of infringements prior to an amendment of a patent specification can turn on whether ‘the specification without the amendment was framed in good faith and with reasonable skill and knowledge’.[3]

The decision

The Court concluded that the relevant specification was framed in good faith and with reasonable skill and knowledge. On its way to this conclusion, the Court surveyed the predecessors to the relevant Australian provisions and cited[4] with approval[5] comments made in the UK parliament in 1883:

The principle of this provision was that the inventor who knowingly or carelessly claimed bad matter was not an object of sympathy.  On the other hand, an infringer who knowingly infringed the good and valid part of a patent because he had discovered some portion, perhaps unimportant, which was bad or invalid, was not entitled to sympathy or protection…

Whilst it appears that this broad statement of principle will continue to provide useful guidance, there is good reason to believe that the more specific aspects of the decision may be less relevant to newer patent applications.

After setting out the requirements of the applicable pre-2013 iteration of the Patents Act, the Court explains[6]:

It is not, however, an obligation of the patent applicant to explain how the invention was made or the theoretical basis underlying any stipulated integer:  NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd [1992] FCA 493; 24 IPR 1 at 27.  It follows, necessarily, that the patent applicant does not need to supply the proof that the invention works.  And if the patent applicant does not need to supply that proof, it does not need to have that proof for the purposes of drafting the specification. (Our emphasis.)

Newer iterations of the Patents Act incorporate enablement and support requirements, inviting consideration as to whether the specification discloses general principles commensurate with the scope of the claims and whether the claims are broader than is justified by the extent of the description, drawings and contribution to the art.

It is difficult to see how these newer requirements can be met without disclosing the theoretical basis underlying the invention and/or proving (that the invention works) through examples.

[1] The court of first appeal for Australian patent matters

[2] Generic Health Pty Ltd v Bayer Pharma Aktiengesellschaft [2018] FCAFC 183

[3] Section 115 of the Patents Act 1990

[4] At paragraph 28

[5] At paragraph 136

[6] At paragraph 133

I am attending the AIPPI World Congress in Cancun, Mexico, 23 to 26 September 2018, and would be very pleased to meet you there.

If you are attending, kindly send us an email with times you may be available for a discussion.

I look forward to meeting you soon in Cancun!

Our very own Ben Mott presenting to an engaged audience yesterday! 

A jam-packed session with presentations from Mal Clark,  AMTIL (The Australian Manufacturing Technology Institute Limited), Dr. Kevin Thomson, CSIRO, Ron Mack AusIndustry, Georgia Davies-Jackson, Macpherson Kelley,   Adrian Crouch, Procept and Dr Rita Choueiri and Liz Smith both of William Buck. 

Many thanks to William Buck for hosting the event and www.business.gov.au Business Entrepreneurs Programme for its support.

Innovation into profit program

A series of experts discuss the route from a new idea to a commercial return and the tools available to make it easier and improve the prospects of success.

Topics covered include:

• Patents,  designs & trade marks – pros, cons & costs
• Confidentiality and Protecting your Trade Secrets
• How to maximise the value of your business
• Lessons from experience at the coal face
• Using  R&D and Export Market Development  grant to boost your business
• Other Government  support  programmes

For more information on this free workshop please contact Mal Clark on 0428 328 228

or register online:   REGISTER NOW

In November 2017, we foreshadowed the demise of the Australian innovation patent in The end is nigh for innovation patents. That article was based on draft legislation including clauses for phasing out innovation patents from about July 2019.

At the time, all signs pointed towards Parliament passing the legislation in 2018. Sentiment had been turning against the innovation patent for some years. In 2015 we wrote The death knell for the Australian innovation patent? in response to official economic analysis.

On 28 March 2018, the legislation was introduced to Parliament without the abolishing clauses. So for now innovation patents remain available as powerful tools for guarding against imitators in the Australian market.

The omission of the relevant clauses was accompanied by very little official comment. IP Australia[1] simply notes (here) that:

The Government has decided to undertake further consultation targeted at better understanding the needs of innovative SMEs before the phase out of the innovation patent occurs.

It remains to be seen just how long innovation patents are to remain available. The arguments for abolition remain, and new legislation may not be too far away.

[1] The Australian Patent Office