logo-full-white

Drafting patents ‘with reasonable skill and knowledge’

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

Authored by

resizedimage125110-Ben Ben Mott

Mechanical Engineer & Patent Attorney