Allowability of post-acceptance amendments under section 102 (pre-Raising the Bar Act)
A Patent Office decision of 25 November 2014 following opposition proceedings in Innovia Security Pty Ltd v Visual Physics LLC  APO 76 illustrates IP Australia’s approach to the allowability of post-acceptance amendments under section 102 of the Patents Act 1990 (pre-Raising the Bar Act).
Introduction of new independent Claim 2 and amendment to Claim 1
During opposition proceedings in relation to Australian application 2010226869 Visual Physics LLC (the applicant) sought various amendments to the accepted specification before completing its evidence-in-answer. The amendments included introduction of new independent claim 2 and a minor amendment to claim 1.
The application related to a synthetic magnification micro-optic system wherein the optical effects provided by the system can be used for authentication of currency and documents. As accepted, claim 1 (the only independent claim) defined a film material comprising “micro-images”. New claim 2 was also directed to a film material comprising “micro-images” but went on to characterise them as being formed of a periodic planar array of a plurality of image icons.
The amendments were advertised and opposed by Innovia Security Pty Ltd (the opponent) on the grounds that they did not comply with subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patents Act 1990.
In substance disclosed in the specification as filed
Subsection 102(1) reads:
(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.
When determining whether subject matter is in substance disclosed in the specification as filed, the Delegate reiterated that the test the courts have applied is that of fair basis. Thus, for an amended claim to claim matter in substance disclosed in the specification as filed, the amended claim must be fairly based on the specification as filed.1
The Delegate noted that fair basis is satisfied when there is a
real and reasonably clear disclosure in the body of the specification of what is claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification.2
Interestingly, the opponent’s approach was to consider the effect of the addition of new independent claim 2 on the scope of claim 1 as amended. Specifically, the opponent argued that as a result of adding new claim 2, claim 1 must cover an embodiment in which the micro-images are not arranged in a periodic planar array. The opponent then argued that the specification as filed does not contemplate the micro-images as being arranged in anything other than in a periodic array, so that as a result of the amendment claim 1 would claim matter extending beyond that disclosed at filing.
In reply, the applicant submitted that the specification as filed did provide clear disclosure of at least one embodiment in which micro-images are arranged in a non-periodic array, with specific reference to a figure of the specification as filed.
On the face of the disclosure of the specification the Delegate accepted the applicant’s submission. Thus, the Delegate held that claim 1 as accepted encompassed micro-images arranged in a non-periodic array, and that this embodiment was disclosed in the specification as filed. Therefore, the introduction of new claim 2 would not result in matter being claimed that was not in substance disclosed in the specification as filed.
In-substance Fall Within the Scope of the Claims Before Amendment
Subsection 101(2)(a) reads:
(2) An amendment of a complete specification is not allowable after [acceptance] if, as a result of the amendment:
(a) a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment;
The Delegate considered the allowability of the amendment under paragraph 102(2)(a) by considering whether the proposed new claim would make something an infringement which would not have been an infringement before making the amendment, effectively extending the patent monopoly.3
The Delegate further considered that allowability of an amendment under paragraph 102(2)(a) is to be determined by reference to the scope of the claims as a whole before the amendment. That is, an amended claim only needs to in substance fall within the scope of broadest claim(s) before amendment.4
Having already concluded that the addition of new claim 2 would not broaden the scope of claim 1 (before amendment), the Delegate held in favour of the applicant on this ground. Interestingly, the Delegate did not consider whether new claim 2 covered any embodiments that would fall outside of claim 1 as accepted. The Delegate presumably took the view that new claim 2 would wholly fall within the scope of claim 1 as accepted.
Paragraph 102(2)(b): Comply With Subsection 40(3)
Claims must be clear, succinct and fairly based on the matter described in the specification
The opponent made various allegations of lack of clarity and non-succinctness, although none of these were made out according to the Delegate.
In summary, the Delegate concluded that the proposed amendments satisfied the requirements of subsection 102(1) and paragraphs 102(2)(a) and 102(2)(b) of the Patent Act 1990 (pre-Raising the Bar) and decided against the opponent on all grounds. Subject to appeal, the opposition to the proposed amendments was dismissed (with costs awarded against the opponent) and the amendments allowed.
The decision reiterates that the Patent Office construes claims against redundancy. In doing so, it appears that the Office would accept an argument that the post-acceptance introduction of a new independent claim may force a broader construction of an accepted independent claim, thus resulting in the claims as amended not in substance falling within the scope of the claims before amendment, as required in Section 102(2)(a). As the wording of pre-RTBA Section 102(2)(a) is identical to that of the corresponding subsection in the Raising the Bar Act, we expect the same would apply when assessing allowability of post-acceptance claim amendments under the new Section 102.
- United-Carr Incorporated’s Application  RPC 23, RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd (1998) 42 IPR 353
- Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd  FCA 162 at , cited with approval in Lockwood Security v Doric Products  HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260
- AMP Incorporated v Commissioner of Patents (1974) AOJP 3224
- Robertshaw Controls Co v GSA Industries Ltd (1991) AIPC 90-784