The Australian Patent Office has recently issued three opposition decisions, each finding that claims lacked support under Section 40(3) of the Patents Act 1990, which mandates that patent claims are adequately supported by the matter disclosed in the specification.
Section 40(3), introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, aims to align Australian practice with international norms. As stated in the Explanatory Memorandum to the Bill, item 9:
Overseas law generally requires there to be a relationship between the claims and the description, and between the claims and any document from which priority is being claimed. This is expressed by the requirement that a claim be ‘supported by’ or ‘fully supported by’ the description. Broadly speaking, the terms ‘support’ and ‘full support’ pick up two concepts:
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there must be a basis in the description for each claim; and
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the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.
The IP Australia Patent Manual of Practice and Procedure further clarifies that Section 40(3) ensures the specification provides a foundation for each claim, and that the claim scope remains commensurate with the disclosed description, drawings, and the invention’s contribution to the art.
Common pitfalls leading to support objections include:
- Claims extending beyond the invention’s contribution by encompassing embodiments not disclosed in the specification.
Claims omitting essential features necessary for the described invention to function and achieve its stated benefits.
Recent Case Summaries:
1. CQMS Pty Ltd v ESCO Group LLC [2025] APO 7 (3 March 2025):
This case involved a wear member for earth working equipment. The specification detailed a wear assembly with a lock adjustable between hold and release positions, facilitated by a hinged, folding, or telescoping mechanism. The claims, however, focused on a wear member with a hole configured to secure a lock, without specifying the type of lock. The Delegate found the claims lacked support because they could be construed to include a wear member hole configured for a non-extendable/foldable lock, which was not supported by the specification’s teaching of an extendable or folding lock.
Key takeaway: Claiming a component that can interact with a variety of other components requires that the specification enables the full breadth of those interacting components.
2. Dyson Technology Limited v Jemella Limited [2025] APO 6 (26 February 2025):
This case concerned a hair styling appliance with a heater element. The Delegate, invoking Section 60(3) of the Patents Act, raised a lack of support issue sua sponte. The Delegate found that the claims, beyond the preamble, lacked specific features of the appliance, focusing solely on the heater. The claims were deemed overly broad, as they could encompass hair styling appliances that indirectly heat hair, which were not enabled by the specification.
Key Takeaway: Even without formal opposition, the patent office can raise lack of support issues. Ensure that the claims are properly enabled.
3. Seqirus, Inc. v Translate Bio, Inc. [2025] APO 5 (18 February 2025):
This case involved mRNA delivery for augmenting proteins and enzymes in genetic diseases. The invention’s contribution lay in specific lipid combinations at particular ratios for successful mRNA encapsulation and delivery. The specification exemplified liposomes with specific ratios of DSPC, cholesterol, cationic lipid, and C8-PEG-2000 ceramide. The Delegate determined that the claims, which extended beyond the exemplified embodiments, lacked support, as the specification did not provide a general principle for broader application.
Key Takeaway: In cases involving specific ratios or combinations, the specification must provide a principle of general application to support broader claims.
Considerations for US Practitioners
These decisions underscore the importance of understanding the nuances of Australian patent law, which, while sharing similarities with US law, has distinct requirements. Specifically, the Australian support requirement can present challenges for applications originating from the United States, given the differences between Australian support and the US enablement and written description requirements.
To mitigate potential issues, US patent attorneys should consider the following when filing Australian applications:
- Detailed Specification: Prioritise a comprehensive specification that thoroughly describes the invention, including multiple embodiments and variations.
- Claim Scope: Exercise caution when drafting claims significantly broader than the specific examples and embodiments disclosed.
- Avoid Overly Broad Generalisations: Ensure any generalisations in claim terms are supported by a clear and detailed description.
- Logical Progression: Provide a clear and logical progression from specific examples to broader generalisations, and consider describing a principle of general application to support the entire claim scope.
- Engage Local Expertise: Consult with experienced Australian patent attorneys to review and advise on the specification and claims, leveraging their expertise in local practice and case law.
By adhering to these considerations, US patent attorneys can enhance the likelihood of successful patent prosecution in Australia.
