As previously reported, the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was enacted on 15 April 2012.
One aspect of the changes is the apparent demise of the test for 'fair basis'. Prior to the amendment, the claims of a patent must be (among other things) 'fairly based' on the matter described in the specification. The changes now say that the claims must be 'supported' by matter disclosed in the specification. This 'supported' concept is in line with the majority of overseas jurisdictions and was intended to be so.
The concept of 'fair basis' has often been a difficult concept to properly define. As a component of Australian patent law it was supposed to be a mechanism for balancing the scope of a patent claim granted to a patentee against what the patentee has revealed, in a practical sense, of how to implement the invention. In other words, the test for fair basis was to ensure that a patentee was not given a scope of patent monopoly beyond what is fair in consideration of what the patentee provides to the public. This is in line with the public policy considerations of the patent system, whereby a patent monopoly, of finite term, is given in exchange for a full public disclosure of how to implement the invention, which disclosed teaching is effectively public domain at the end of the patent's life.
What, then, is to provide the checks and balances against undue(albeit 'supported') breadth of patent claims?
There are two further changes effected by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which may go towards filling in the gap left by fair basis in this regard.
Firstly, there has been a raising in the standard of disclosure in a patent specification. Whereas, a patent specification, prior to the amendment, was required to described an invention fully; it must now disclose the invention in a manner clear enough and complete enough for the invention to be performed by a person skilled in the relevant art. This raised standard of disclosure now also applies to Australian provisional patent applications. Consequently, provisional applications having overly conceptual disclosure (which was permitted) rather than real nuts and bolts practical disclosure will now be a thing of the past.
The second significant change relates to the issue of utility. A claimed invention has been required to be 'useful' to be patentable. The changes have introduced a threshold definition of when a claimed invention is to be taken as not useful: "... an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification". Furthermore, "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".
This change not only raises the disclosure requirements for Australian patent specifications, but also requires a disclosure of utility which supports the entire breadth of the invention claimed. In other words, conceivably a claim which covers something more than the level of disclosure provides sufficient utility may be found to be lacking in utility. An example of where this may prove relevant are claims which provide excessive ranges of parameters but where the specification provides practical working examples of only specific parameters, i.e. not the entire claimed range. This is not an uncommon feature of chemical and pharmaceutical patents.
This change in the utility threshold does have an aspect of providing some of the balance against undue claim scope which 'fair basis' once presided. One can predict that this area of patent law may become fertile ground for judicial review and development in the years to come.
The above changes will come into effect for all Australian patents and patent applications in which a request for examination is filed on or after 15 April 2013. Consequently, these changes can have a retrospective effect on existing pending Australian applications, unless a request for examination is filed by 14 April 2013.
by Simon Ellis
