Australia’s Best Method Requirement Under The “Raising The Bar” Patent Law

/ Martin Pannall / Articles

Australia’s patent law requires that, in additional to describing the invention “fully”, a patent specification must also disclose the “best method of performing the invention”.

Sub-section 40(2) of the Australian Patents Act 1990 requires that:

A complete specification must:

(a)  disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and

(aa)  disclose the best method known to the applicant of performing the invention

This requirement stems from the need to fully describe the invention claimed so as to not keep any details of the invention secret which would otherwise need to be shared with the public to allow the person skilled in the art to recreate the invention to the best level known to the applicant. This is part of the bargain of teaching society the invention in exchange for a limited term of monopoly afforded by a patent.

Failure to disclose the best method known to the applicant can result in the invalidation of any patent subsequently granted on the application.

In a recent Decision1 by the Australian Patent Office, one of the issues considered was that of best method. In Merial, Inc. v Bayer New Zealand Limited, the Hearing Officer considered the issue of best method in the form of three questions:

  1. what is the invention for which a best method must be provided;
  2. what method is described in the specification; and
  3. was the applicant aware of a better method?

While it is established law that the best method known to the applicant that must be disclosed in the specification is that known by the applicant at the time of filing the application,2 there is still some question as to when this requirement needs to be fulfilled, i.e. is it possible to subsequently amend the specification as filed to add the best method should the specification as filed be deemed to be lacking disclosure of the best method?

In the Full Federal Court decision of Pfizer Overseas Pharmaceuticals v Eli Lilly,3 it was held that the specification can be amended to include the best method at least until the time of grant, but left open the possibility of including the best method even after grant of the patent.

This decision therefore made it quite possible to correct an otherwise-deficient specification in regards to best method and did not necessarily result in the automatic invalidation of a patent (although great care should be taken not to fall foul of the provisions4 of the Patents Act which give a court discretion in allowing (or refusing) amendments, which in one case resulted in a patentee being refused the opportunity to amend their patent to overcome a finding of lack of best method, resulting in the ultimate revocation of the patent).5

Pre-Raising the Bar Amendment Provisions

These latter decisions were made in respect of patents filed prior to the “Raising the Bar” provisions,6 which governed all patent applications for which a Request for Examination was filed on or after 15 April 2013. These provisions served, in part, to increase the validity thresholds for the granting of a patent in Australia.

Prior to Raising the Bar, the provisions dictating what amendments were not allowable, were set out in Section 102.  In particular, subsection 102(1) provided:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed.

Thus, under the “old law”, it was possible to amend a specification which added new matter, provided that it did not result in the claiming of that new matter.

Accordingly, the scope to add new matter to add a best method description after the application was filed, and therefore correct an otherwise deficient specification, was quite generous.

Post-Raising the Bar Amendment Provisions

Under the current Act as amended under the Raising the Bar provisions, the equivalent subsection 102(1) provides:

(1) An amendment of a complete specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the following documents taken together:

(a)  the complete specification as filed;

(b)  other prescribed documents (if any).7

It will be noted that the new provision now prohibits the making of an amendment which would result in disclosing matter that extends beyond that disclosed in the specification as filed.

In the context of amending a specification after filing to correct a deficient specification by adding information relating to a best method, this tightened provision appears to close off (or at least severely restrict) any opportunity to correct a best method defect. This effectively requires that the specification include the best method at the time of filing the application.

In the Patent Office Decision referred to above (Merial, Inc. v Bayer),8 the Hearing Officer found the opposed patent application not to have disclosed the best method of performing the invention. While the opposed patent was governed by the Raising the Bar provisions, the Hearing Officer nevertheless allowed the Applicant a period of 2 months to propose amendments to overcome the deficiency (of the finding of lack of best method). The Officer however stated that “It is not clear to me how the deficiencies in the opposed application may be overcome since it appears that any proposed amendments would result in adding new matter that was not present in the originally filed specification, and therefore would not be allowable under section 102 of the Act.”

It remains to be seen how the Applicant responds.

The new requirement that the specification as proposed to be amended does not claim or disclose matter that extends beyond that disclosed in the complete specification as filed in combination with the prescribed documents has yet to be considered fully by the courts. However, in another, even more recent Patent Office Decision9 in Steven Borovec v K-Fee System GmbH, the Hearing Officer in considering this question, cited guidance provided by the Australian Patent Examiner’s Manual of Practice and Procedure10:

“The effect of sec 102(1) is that an amendment must not add new matter that the hypothetical person skilled in the art could not directly derive by reading the information in the complete specification as filed and other documents prescribed by regulation 10.2A  i.e. the explicit and/or implicit disclosure of the complete specification as filed, taken together with the other documents prescribed in reg 10.2A.  However, where the person skilled in the art could directly derive the matter sought to be added to the specification from this combination of documents, an amendment will be allowable under sec 102(1).”

Thus, the correct approach to considering whether an amendment adds new matter is to ask whether the skilled person would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn from the combined disclosure of the complete specification as filed and other prescribed documents.  This comparison is a strict one in the sense that subject matter will be added unless it is clearly and unambiguously disclosed, either explicitly or implicitly, in the relevant documents”.

Accordingly, while the new provisions appear to be extremely limiting in allowing amendments to overcome a finding of lack of best method in a specification for an application governed under the Raising the Bar law, there may well be some small “wiggle room” in some cases by being able to combine information from the specification as filed with information in the “prescribed documents”, as well as the possibility of relying on information that is “implicitly” disclosed in the combination of these documents.

With the ground of lack of best method being used more frequently in recent years to attack the validity of an Australian patent, and with more patents being granted under the Raising the Bar provisions, it is only a matter of time until a case comes before the courts to provide more guidance on the issue.

 

  1. Merial, Inc. v Bayer New Zealand Limited [2018] APO 14 (22 February 2018) [Merial]
  2. Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992), 25 IPR 119
  3. Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224
  4. Section 105 Australian Patents Act 1990
  5. Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 (8 March 2016)
  6. IP Laws Amendment (Raising the Bar) Act 2012
  7. Regulation 10.2A of the Patents Regulations 1991 defines “prescribed documents” for the purpose of paragraph 102(1)(b) as an abstract filed with the complete specification; any part missing from the compete specification at filing that was later incorporated into the specification under reg.3.5A or PCT Rule 20.5 or Rule 20.6; and an amendment that has been made to the complete specification after filing, for the purpose of: I. Correcting a clerical error or obvious mistake; or ii. complying with sec 6(c) (micro-organism deposit requirements).
  8. Merial, supra note 1 at 239
  9. Steven Borovec v K-Fee System GmbH [2018] APO 18 (9 March 2018)
  10. Australian Patent Examiner’s Manual of Practice and Procedure Section 2.23.8.1A
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Client News: Determined2 nominated for community achievement award

/ Madderns / News


We wish to congratulate our client, Determined2, on its recent nomination for the Flinders Foundation Leadership and Innovation in Health Award. Determined2 provides immersion therapy to people with a disability or injury. This unique form of therapy gives participants greater freedom of movement in a safe underwater environment. Founder Peter Wilson created the immersion therapy program after suffering a serious workplace injury.

 

 

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Can you infringe a trade mark registration by using a meta-tag in the source data for a website?

/ Louise Emmett / Articles

Many businesses use search engine optimization tools to improve the ranking of their website in search results.  These tools can include incorporating meta-tags (or website keywords) in the source data for the website.  Search engines (such as Google) use meta-tags to identify which search results to display when a user conducts a search.

The Full Federal Court has recently confirmed that the use of a meta-tag may constitute trade mark infringement as, although meta-tags are not actually displayed on a website, the source data of a website is visible to those who know what to look for.

The case of Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56 involved an apartment complex development in Cairns called “Harbour Lights”.  The “Harbour Lights” name is registered as a trade mark in respect of a range of property related services including commercial real estate agency services, accommodation letting agency services and hotel accommodation services.

Apartment owners in the “Harbour Lights” complex who wish to let their apartments are free to choose Accor or another letting agent to manage this for them, or they can arrange the letting themselves.  Only Accor, however, is permitted to operate its business on-site which means it can offer benefits to guests such as on-site reception and on-site luggage storage.  Liv Pty Ltd trades under the name “Cairns Luxury Apartments” and offers accommodation services in the “Harbour Lights” complex in competition with Accor.

Accor claimed that Liv had infringed the trade mark registration for “Harbour Lights” by using this name in various ways including in domain names, websites and advertising material and as a meta-tag in the source data of a website.  (The case also involved various other claims and cross-claims).

The claim in relation to the use of meta-tags involved the source data for Liv’s website at: cairnsluxuryapartments.com.au.  The source data for this website included the following phrase:

“content: = Harbour Lights Apartments in Cairns offer luxury private waterfront apartment accommodation for holiday letting and short term rental”.

The Full Court upheld the finding of the primary judge that the use of the words “Harbour Lights Apartments” in this phrase was, effectively, use as a business name and that this consequently constituted trade mark infringement.

As part of their defence, Liv argued that there was no evidence that the use of the text in the source data was within their control, given that the source data for the website was created by an IT consultant.  This argument was rejected on the basis that Liv had engaged an IT consultant to create the website, Liv operated the website, Liv had changed the content from time to time, and Liv controlled the website including the source data for the website.  The primary judge inferred that the words comprising the source data must have been included to optimise the search results for Liv’s benefit, and that the IT consultant for Liv must have included the words in the source data for the website with Liv’s acquiescence.  The Full Court upheld this finding.

Lesson:  The use of meta-tags may constitute trade mark infringement depending on the circumstances.  If text would infringe if it appeared in standard advertising material, then the text is likely to infringe if used in the source data for a website notwithstanding that this data is not actually displayed on the website itself.  Business owners should consequently take care to check the content of the source data used for their websites.

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Applications for Research Consortia Program now open

/ Madderns / News

Applications for the Research Consortia Program, under the South Australian Premier’s Research and Industry Fund, are now open and researchers and industry are invited to apply.

The Research Consortia Program provides funding for major research collaborations between universities, other research organisations, government and industry to tackle major challenges in areas of significance to South Australia that aligns to the state’s economic priorities.

Research must provide innovative solutions that can be used by South Australian businesses to expand activity and create jobs.

For this round, priority will be given to research consortia that develop a specific research challenge that falls within one or more of the following research areas:

  • Energy
  • Water, and
  • Agriculture (including food and wine).

More information about the Program can be found at http://innovation.sa.gov.au/opportunity/research-consortia-program/.

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