Australian patent support requirements – 11 February 2016
In 2013, significant changes to Australia’s patent support requirements were introduced by the ‘Raising the Bar’ Act. The new requirements apply to patents and patent applications in relation to which examination was not requested prior to 15 April 2013, and are intended to accord with analogous requirements in the UK and Europe.
Whilst these requirements are yet to face Australian judicial scrutiny, we now have an Australian Patent Office decision to provide guidance. In CSR Building Products Limited v United States Gypsum Company [2015] APO 72 the Patent Office’s delegate, Dr S D Barker, sets out a structured approach to the relevant enquiries which no doubt will be followed by patent examiners until the courts tell us otherwise.
Australian law, post-Raising the Bar, specifies at subsection 40(3) of the Patents Act 1990 that ‘The claim or claims must be clear and succinct and supported by matter disclosed in the specification’.
Dr Barker extracts [1] from UK authorities and goes on [2] to summarise the relevant enquiry in the following terms:
‘Thus the task is to:
i) construe the claims to determine the scope of the invention as claimed,
ii) construe the description to determine the technical contribution to the art, and
iii) decide whether the claims are supported by the technical contribution to the art’.
The claims were found invalid on the basis that the disclosed features did not guarantee the key benefit of the invention:
‘Based on what is disclosed in the specification, it is unpredictable whether a panel containing high expansion particulates will be fire resistant. In this regard samples 3 and 4, which are apparently identical apart from their density, are of significance. […] The art has been advanced only to the extent that it is now known that high expansion particulates CAN produce a low density, fire resistant gypsum panel in some instances.’ [3]
‘The claims are limited to gypsum panels that contain high expansion particles AND are fire resistant. However, the technical contribution to the art is more limited than this. Consequently, the scope of the claims is not supported by the technical contribution to the art.’ [4]
[1] At paragraphs 110 to 114
[2] At paragraph 115
[3] At paragraph 117
[4] At paragraph 118
