Australia’s first decision on the new disclosure and support requirements under ‘Raising the Bar’ le
The recent Australian Patent Office decision of CSR Building Products Limited v United States Gypsum Company  APO 72 is the first to consider the new disclosure and support requirements for Australian patent specifications, which were introduced into the Patents Act under the ‘Raising the Bar‘ legislation. The decision provides some insight into how the new requirements might be assessed, and the circumstances under which a patent specification could be found to not comply with those requirements.
Lessons for patent owners in satisfying disclosure and support
- Disclosure and support are different requirements that are distinct and must be considered separately according to their own criteria.
- To satisfy the disclosure requirement, information contained in a patent specification must sufficiently enable a skilled person to perform an invention across the full extent of the monopoly claimed. However, where one is required to carry out tests that go beyond what is routinely done in an industry, such testing could be regarded as an undue burden and in these circumstances a patent specification may be found to lack sufficient disclosure.
- For claims to be supported, the claims must not be broader than justified by an invention’s technical contribution to the art. Examples in a specification may help to inform the extent of the technical contribution. But where the examples fail to satisfy every element that is claimed then claim scope may be considered to be unduly broad and thus the claims could be found to lack support.
United States Gypsum Company’s Patent Application
United States Gypsum Company’s Australian patent application concerns light weight and fire resistant gypsum panels composed of a gypsum core containing high expansion particles of a specified type and two cover sheets. The panels were also required to have certain properties, as set out in claim 1. These properties included a defined core density, core hardness and core Thermal Insulation Index. Additionally, since claim 1 was directed to a “fire resistant” panel, it was considered that the requirement that the panel also meet certain standards for fire resistance should be imported into the claim.
Summary of the disclosure requirement
Under the Raising the Bar legislation, a patent specification is required to “disclose the invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”.
The disclosure requirement makes it necessary for a patent specification to provide sufficient information to “enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention”.1 This calls for the disclosure in the specification to be sufficiently enabling to allow the invention to be worked across the full extent of the claim.
How was the disclosure requirement assessed?
In assessing disclosure, the Delegate considered that it is necessary to:
(i) construe the claims to determine the scope of the invention as claimed;
(ii) construe the description to determine what it discloses to the person skilled in the art; and
(iii) decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
Sufficiency of disclosure via a principle of general application
The Delegate initially looked at the high expansion particles that were defined in the claims and whether a “principle of general application” could be applied, such that there would be reasonable expectation that the invention could work with particles other than the high expansion vermiculite particles that were exemplified in the patent specification. The Delegate determined that a skilled person would be able to prepare panels using non-vermiculite particles without undue burden. Accordingly, the Delegate found that a principle of general application would apply, such that claim scope would also extend to other particles that satisfy the criterion of being a high expansion particle.
Is there sufficiency of disclosure for the claimed properties?
The Delegate also looked at the properties of the panels and considered whether a skilled person could achieve the combination of claimed properties by following the instructions in the specification.
It is generally accepted that a reasonable amount of trial and error is permissible when following teachings about implementation of an invention. However, if work involved in implementing an invention amounts to an undue burden then the disclosure requirement may not be met.
In arriving at the decision, the Delegate considered that:
- Process and starting material variables involved in preparing the panels would affect whether a panel would have the necessary properties. The patent specification failed to provide clear guidance in how to adjust these variables in order to achieve with certitude, the full combination of properties claimed.
- When work in adjusting the variables amounts to reasonable trial and error, then the specification would provide an adequate disclosure. However, if work involved in implementing an invention amounts to an undue burden then the disclosure would be inadequate.
- Data presented in the patent specification showed that panels of similar composition did not consistently pass fire resistance tests and that the Thermal Insulation Index property was not a reliable predictor of fire resistance.
- A skilled person would need to conduct fire testing of the panels in order to perform the invention that is claimed. However, evidence suggested that fire resistance testing according to UL or ASTM procedures was very expensive and as such, they were not routinely performed and would not be part of normal trial and error.
- It would not be reasonable to carry out fire resistance tests due to their expense. The work required to ascertain fire resistance went beyond what was routine in the industry and therefore amounted to an undue burden. Consequently, the Delegate found that the disclosure requirement was not met.
Summary of the support requirement
The Raising the Bar legislation requires the claims of a patent specification to be “supported by matter disclosed in the specification”.
The Explanatory Memorandum states that “the terms “support” and “full support” pick up two concepts:
- there must be a basis in the description for each claim; and
- the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.” 2
This decision considered the support requirement in the context of the latter concept of whether the invention’s “technical contribution to the art” justifies the patentee’s entitlement to the width of the monopoly that is claimed.
How was the support requirement assessed?
In assessing support, the Delegate considered that the task is to:
(i) construe the claims to determine the scope of the invention as claimed;
(ii) construe the description to determine the technical contribution to the art; and
(iii) decide whether the claims are supported by the technical contribution to the art.
Were the claims adequately supported?
In deciding the issue, the examples of the patent specification were examined. This examination revealed that not all panels using high expansion particles had satisfactory fire resistant properties. Rather, some examples falling within the general scope of the invention as claimed did not pass the fire resistance tests.
The Delegate determined that the technical contribution to the art made by the invention lay in finding that high expansion particles can produce a low density fire resistant gypsum panel in some instances. However, as it could not be shown that the use of high expansion particles would guarantee the production of the low density, fire resistant panels in all cases, the Delegate concluded that the technical contribution to the art was more limited than the subject matter of the claims.
As the extent of the technical contribution afforded by the invention was narrower than what was being claimed, the Delegate found that the scope of the claims was not supported by the specification.
What was the overall decision?
Unfortunately for United States Gypsum Company, the Delegate found that their Australian patent application failed to satisfy the disclosure and support requirements that are now mandated post ‘Raising the Bar’.
- Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, page 46
- Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, pages 48-49