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Using post-filing evidence and/or data to improve patent outcomes in Australia 

Post-filing evidence or data can be a very useful tool during prosecution. In Australia, Examiners are generally very responsive to post-filing evidence and data. In this regard, post-filing evidence or data can be utilised to address support, sufficiency, and inventive step objections raised during the prosecution of an Australian patent application. 

Support 

Section 40(3) of the Patents Act 1990 states that ‘[t]he claim or claims must be clear and succinct and supported by matter disclosed in the specification’. As such, basis for each claim must be found in the specification, and the specification must show that the scope of the claims is equivalent to the technical contribution of the specification to the art. 

A support objection arises when the scope of the claims is not equivalent to the technical contribution of the specification to the art. For example, the specification may demonstrate that a compound is useful in the treatment of a particular disease or disorder but the claims may encompass subject-matter beyond this particular disease or disorder. As such, the scope of the claims exceeds the technical contribution of the specification to the art. In this particular circumstance, post-filing evidence or data (such as experimental data) can be utilized to show that the compound can indeed be used to treat the other disease or disorder(s) falling within the scope of the claim. 

Sufficiency 

Section 40(2)(a) of the Patents Act 1990 states that a complete application must ‘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’. In order to satisfy this requirement, the description must contain sufficient information for the person skilled in the art to achieve the invention without undue burden or excessive experimentation. 

A sufficiency objection arises when the person skilled in the art would not be able to work the invention across the full scope of the claims without undue burden or excessive experimentation. For example, a claim may encompass within its scope a multitude of compounds due to Markush language whilst the description may only contain a several methods of generating certain compounds within the scope of the claims. In this particular circumstance, post-filing evidence or data in the form of journal articles or Declarations showing that the retrosynthesis of these compounds was readily understood and could be applied to different compounds could be used to address this sufficiency objection. (See BASF Corporation [2019] APO 34).

Inventive Step 

Section 18(b)(ii) of the Patents Act 1990 states that the claims must ‘involve an inventive step’. The accepted test, in Australia, is “[w]ould the notional research group (or person skilled in the art) at the relevant date in all the circumstances … directly be led as a matter of course to try [the invention claimed] in the expectation that it might well produce [a useful desired result]”. In order to satisfy this requirement, it must be shown that the claims would not have been obvious to the person skilled in the art in light of the prior art and common general knowledge. This can lie in the advantages of the claimed invention over the prior art. 

Post-filing evidence or data can be utilized in addressing an inventive step objection by providing comparison data between the prior art and the claimed invention. This post-filing evidence or data should show the advantages or superior properties of the invention over the prior art. Alternatively, a Declaration can be provided to support the non-obviousness of the claimed invention. For instance, the Declaration can be used to show that the common general knowledge at the time of filing was teaching away from the claimed invention. 

Whilst it may not be possible to always include the most up-to-date data when filing the complete application, it is important to recognize that post-filing evidence and/or data may be used to assist in resolving any issues that arise during prosecution in Australia.  

If you require guidance in relation to overcoming support, sufficiency or inventive step objections in Australia, please do not hesitate to contact Michael Buck IP. We will gladly advise as to whether post-filing evidence or data can be utilised to alleviate these issues.