Internal consistency provides fair basis
The Sunnyfield Association v Cronk  FCA 143
The Sunnyfield case highlights the proposition that the law of fair basis in Australia does not concern itself with matters of inventive merit or concepts of whether the monopoly claimed would be an undue reward for the disclosure.
Facts of the case
The Applicant (Sunnyfield) applied for leave to appeal to the Full Federal Court against the decision of a single judge of the Federal Court, which in turn was an appeal by the Applicant against a decision of the Australian Patent Office rejecting their opposition to the granting of Patent Application Nos. 716550 (AU ‘550) and 759725 (AU ‘725). During the application stage it became apparent that leave to appeal was confined to the primary judgement in respect of AU ‘725.
AU ‘725 is a divisional of AU ‘550 which in turn is a divisional of AU 64800/94. After filing (17 April 2000), amendments were made to the specification of AU ‘725 on 18 February 2003 and again on 4 March 2003 (before acceptance).
The subject matter of AU ‘725 relates to devices for providing artificial lighting and in particular devices for reflecting light from a light source (e.g., a light bulb or lamp). As filed, the claims of AU ‘725 referred specifically to a “shielding device” and the background of the invention was said to relate to improvements in devices for reflecting light emitted by an artificial source. Upon amendment, the claims were directed to a “luminaire” having a reflector device. Differences in terminology based upon the amendments identified that the phrase “adjustable reflector device/reflector device” had become a “luminaire”. Figure 3 (as filed and shown below) illustrated that the adjustable reflector device (1) was “used in conjunction with the shielding device” (17) of the present invention. Based upon the amendments made, Figure 3 was then described as “an exploded view of one example of a luminaire”. The claims of AU ‘725 (as amended) were directed to a luminaire having a reflector device but which was not limited to also being in conjunction with the shielding device. It was also noted that AU ‘550 (the parent patent) was directed to “a reflector device” and referred to a V-shape perforated heat shield being preferably attached to the lamp fitting. There was no suggestion that AU ‘725 did not validly claim divisional status from AU ‘550.
It was accepted that if the claims of AU ‘725 (as amended) were not fairly based on AU ‘725 as filed, then the claims would have a priority of the date when the amendments were made and would therefore not be novel in light of, for instance, AU ‘550. The primary judge considered that the amended claims were fairly based and hence dismissed the appeal. Sunnyfield requested leave to appeal this decision based on submissions that the primary judge did not apply the correct law in respect of fair basis.
The relevant law
In respect to the leave request, the Court stated that only in exceptional circumstances would it be right to grant an applicant what would effectively amount to a further consideration of factual issues. It was stated that leave to appeal would only be granted where the applicant had demonstrated a clear prima facie case of error in the decision appealed from, such that the likely effect of the decision would be to allow an invalid patent to proceed to grant (as per Genetics Institute Inc v Kirin-Amgen Inc  FCA 742; (1999) 92 FCR 106).
Section 114(1) of the Patents Act states that “where a claim of a complete specification claims matter that was in substance disclosed as a result of amending the specification, the priority date of the claim must be determined under the regulations.”
Regulation 3.14(b) dictates that the priority date of a claim will be the date of filing the statement of proposed amendments that resulted in the disclosure referred to in subsection 114(1).
Past decisions of the Federal Court have accepted that in order to determine whether a claim was “in substance disclosed” the claim must be fairly based on the specification as filed. While emphasis was placed on regulations which dictate how priority dates are to be calculated (e.g., regulations 3.12-3.14), no mention was made by the Court to explain why the term “fairly based” (as in requiring “fair basis”) is specifically recited in regulations 3.12(1)(b), 3.12(1)(c), 3.12(1)(d)(i), 3.12(3), and 3.13(2) but not 3.14. The Court appeared to also accept that the test for determining if matter is “in substance disclosed” remains an enquiry as to whether the claimed matter is fairly based on the specification as filed.
The primary judge found that such basis did exist in the original filing of AU ‘725 and therefore the claims were entitled to the earlier priority date afforded by being a divisional of AU ‘550.
The decision – leave to appeal
Sunnyfield argued that in the primary judgement His Honour erred in finding that even though the specification of AU ‘725 (as filed) related to a “shielding device” it was still capable of providing sufficient disclosure to the “luminaire” reflector device not necessarily in conjunction with the heat shield device. Accordingly, it was Sunnyfield’s view that the primary judge should have found that the claims of AU ‘725 were not fairly based on the disclosure in AU ‘725 as filed because there was no basis for an invention in respect of a reflector device per se (i.e., a luminaire having a reflector device which may not necessarily include a shielding device).
The Court highlighted that the requirement for fair basis occurs in section 40(3) of the Patents Act which states that the “claim or claims must be clear and succinct and fairly based on the matter described in the specification.” Acknowledging the High Court decision in Lockwood Security Products Pty Limited v Doric Products Pty Limited  HCA 58 (‘Lockwood’) the Court, stated that there was an implicit reference in section 40(3) to “invention” based on section 40(1) but that this did not mean the “inventive step taken by the inventor” or the advance in the art made by the inventor. The Court suggested that section 40(3) does not call for an enquiry which would be analogous to that between a claim and an alleged anticipation or infringement and it is wrong to employ “an overly meticulous verbal analysis”. Also, as suggested in Lockwood (at 68), the Court acknowledged that it was wrong to seek to isolate in the body of the specification “essential integers” or “essential features” of an alleged invention and to ask whether they correspond with the essential features of the claims in question.
The Court also cited Rehm Pty Ltd v Webster Securities Systems (International) Pty Ltd (1988) 81 ALR 79 (‘Rehm’) which stated that when dealing with fair basis, the question is whether there is a “real and reasonably clear disclosure” in the body of the specification for what is then claimed, so that the alleged invention as claimed is broadly, that is to say in the general sense, “described in the body of the specification”.
Citing the Lockwood case again, the Court stated that this phrase “real and reasonably clear disclosure” serves the function of compelling attention to the construction of the specification as a whole putting aside particular parts which, although in isolation might appear to point against the “real disclosure”, are in truth only loose or stray remarks. In particular, the Court warned against limiting disclosures to the preferred embodiments.
After a review of the specification as a whole, the Court highlighted that the heat shield is mentioned as an additional feature which can help redisperse excess light and heat from a hot spot area below the reflector. The Court agreed with the primary judge, who appeared to place emphasis on the drawings and diagrams, stating that the figures were important in the present case because the specification directed attention to the accompanying figures to assist in the understanding of the general disclosures made in the body of the document.
Sunnyfield, while seemingly admitting reference to the reflector device per se, stated that as a matter of law the test is not whether there is mere reference to a feature that is subsequently claimed but there must be a real and reasonably clear disclosure of the invention disclosed in the originally filed document. In this regard Sunnyfield highlighted Lockwood at 87 which stated that ‘coincidence of language’ between a claim and part of the body of a specification does not establish fair basis if that part of the language of the specification does not reflect the description of the invention in light of the specification as a whole. What was truly disclosed in AU ‘725 (as filed), Sunnyfield argued, was one form of the invention that must include the heat shield. It was submitted that “reference” to a reflector was not sufficient to provide fair basis. As such it was put to the Court that the primary judged erred by indicating that sufficient disclosure is made when a lesser standard is met and that this test is not in accordance with the law as set down in Lockwood.
Citing again Rehm the Court agreed with the primary judge in that the question is whether there is a real and reasonably clear disclosure in the body of the specification (as filed) of what is then claimed. As the figures remained the same throughout the prosecution history of AU ‘725 and that these figures disclosed both the luminaire and the heat shield (the heat shield being a preferred addition to the luminaire) the Court agreed that there was a “real and reasonably clear disclosure” of the luminaire itself and that this matter was in turn “in substance disclosed” in the specification as filed.
Accordingly, it was found that there was no clear prima facie case of error on behalf of the primary judge and hence the application for leave to appeal was dismissed.
The Sunnyfield decision serves as a further working example of the Lockwood High Court proposition that the fair basis enquiry is essentially confined to the disclosure provided within the specification itself and is not to be confused with issues of inventive step or inventive merit. In addition, the question of fair basis should not be resolved by consideration of whether the monopoly claimed would be an undue reward for the disclosure, but whether the claims travel beyond that which the specification disclosed (i.e., whether there is a real and reasonably clear disclosure of the claimed invention in the specification).
From the Sunnyfield decision it can be seen that when looking to see whether the claims “travel beyond” the description one is looking at the internal consistency between what is claimed and what is described, taking the whole of the specification into consideration.