Introduction
While the requirements for ‘enablement’ and ‘support’ were amended in 2012 via the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012], it is only recently that these changes have become the subject of judicial scrutiny.
The Federal Court has helpfully set up guidelines for assessing whether patents fulfill these requirements. However, the application of those guidelines in recent cases has highlighted questions that remain for resolution.
The Rationale for Patent Grant
It is postulated as a rationale for the Patent system that patents promote innovation by ensuring early disclosure of the invention.
Two requirements are key to this:
- enablement (requires sufficient teaching such that a skilled practitioner can make and use the invention without undue experimentation), and
- written description (requires that what is claimed aligns with what the inventor actually disclosed or possessed as of the filing date).
Thus, the monopoly sought by a patent applicant is commensurate with what is disclosed. This is the patent ‘contract’ or ‘exchange’[1]: the grant of exclusive rights in exchange for enabling the public to practice the invention once the patent expires.
S.40(2)(a) & S.40(3) of the Patents Act 1990
Section 40(2)(a) requires that the complete specification “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”. The ‘disclosure’ requirement embodies the ‘enablement’ principle.
Section 40(3) requires that the claims be “clear and succinct and supported by matter disclosed in the specification”. The ‘support’ requirement embodies the written description principle i.e. the claims must not extend beyond what is actually disclosed.
Pre- and Post- Raising the Bar (RTB) Amendments
Pre-RTB law: “Describe the Invention Fully” and “Fair Basis”
The old Pre-RTB law still applies to cases for which examination had not been requested by Friday 12th of April 2013.
Section 40(2)(a) of the old law requires that the specification “describe the invention fully”, while s 40(3) requires that the claims be “fairly based” on that description.
The High Court has confirmed that these grounds of invalidity in the old law address questions of form rather than substance[2].
The ‘full description’ test was generous to a patentee: it sufficed that the skilled person could make one embodiment within each claim without invention or prolonged study. Enablement across the whole claim breadth was unnecessary.
The fair basis test was also patentee-friendly. In essence, it asked whether the claims were textually consistent with what the specification “describes as the invention”, a standard often met by provision of a suitably drafted consistory clause.
Post-RTB Law: Sufficiency of Disclosure and Support
The RTB Act replaced the ‘full description’ requirement with a true ’sufficiency’ test: the specification must “disclose the invention in a manner which is clear enough and complete enough for the invention to be performed” by the skilled addressee across “the whole width of the claims” (s 40(2)(a)).
The old ’fair basis’ requirement became a European-style ’support’ requirement: each claim must be “supported by” the matter disclosed and must not be broader than is justified by the patentee’s technical contribution (s 40(3)).
The Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) confirmed that these amendments were intended to align Australian law with the corresponding UK and European standards.
Section 40(2)(a) Enablement
The new Section 40(2)(a) requires that the specification must “disclose the invention in a manner which is clear enough and complete enough for the invention to be performed” by the skilled addressee across “the whole width of the claims”.
Burley J in Cytec v Nalco[3] set up the definitive test:
- Construe the claims to determine the scope of the invention as claimed;
- Construe the description to determine what it discloses to the person skilled in the art; and
- Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims[4].
- Is it plausible that the invention can be worked across the full scope of the invention?
- Can the invention be performed across the full scope of the claims without undue experimentation?
Section 40 (2)(a) requires the skilled person to be able to perform the invention, but does not lay down the limits as to the time and energy that the skilled person must spend seeking to perform the invention before it is insufficient.
The subsection, by using the words “clearly enough and completely enough”, contemplates that patent specifications need not set out every detail necessary for performance, but can leave the skilled person to use his/her skill to perform the invention. In so doing they must seek success.
The skilled person should not be required to carry out any prolonged research, enquiry or experiment.
He/she may need to carry out the ordinary methods of trial and error, which involve no inventive step and generally are necessary in applying the particular discovery to produce a practical result. [5]
S40 (3) Support
Section 40(3) requires that the claim or claims be clear and succinct and supported by matter disclosed in the specification.
In Cytec v Nalco[6], Burley J. again basically set out the rules for ’support’:
- ascertain what is the invention which is specified in the claims;
- compare that with the invention which has been described in the specification.
- decide whether the invention in the claims is supported by the description;
Mere mention in the specification of features appearing in the claim will not necessarily be a sufficient support.
The word ‘support’ means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed. To assess whether adequate support has been provided, it is first necessary to ascertain the technical contribution made to the art by the patent.
Where it is a product, it is that which must be supported in the sense that the technical contribution to the art disclosed by the specification must justify the breadth of the monopoly claimed.[7]
Accordingly, as a result of the RTB amendments, when it comes to issues of support and enablement, Australian law is now more closely aligned with the corresponding UK and European standards.
As we will see in part 2 of our analysis of the ‘enablement’ and ‘support’ requirements in Australia, there have been a number of Federal court and Patent Office decisions which provide guidance on these issues.
[1] Cytec Industries Inc. v Nalco Company [2021] FCA 970
[2] Kimberly-Clark Australia Pty v Arico Trading International Pty Ltd [2001] HCA 8 and Lockwood v Doric (No 1) [2004] HCA 58
[3] Cytec Industries Inc. v Nalco Company [2021] FCA 970.
[4] Burley J cited with approval CSR Building Products v United States Gypsum Company [2015] APO 72.
[5] Burley J referred to the following decisions with approval: In Mentor Corp v Hollister Inc (No 2) [1992] 7 WLUK 465; [1993] RPC 7 at 14, the Court of Appeal (per Lloyd LJ, with whom Stuart-Smith and Scott LJJ agreed) endorsed a passage from Aldous J at first instance (Mentor Corp v Hollister Inc [1991] 3 WLUK 167; FSR 557 at 562).
[6] Cytec Industries Inc. v Nalco Company [2021] FCA 970
[7] CSR Building Products Ltd v United States Gypsum Company [2015] APO 72
