Australian divisional patent practice reviewed – “falling within the scope of the claims of the acce
Memcor Australia Pty Ltd v GE BetzDearborn Canada Company  FCA 507 and  FCAFC 163
Under Australian practice a divisional application can be filed anytime before the grant of a pending application. Certain time limits exist which dictate when one can file a divisional directed to any subject matter disclosed in the parent specification (as filed) and when one must restrict the divisional to subject matter “falling within the scope of the claims of the accepted specification“. This patent case confirms that failure to adhere to the requirements for the filing of a divisional may prove to be fatal. It also provides an insight into how one is to approach the enquiry as to whether or not the claims of a divisional fall within the scope of the claims of the accepted specification of the parent.
Section 79B of the Patents Act 1990 (Cth) ('the Act') governs the filing criteria for divisional applications. Under this section, divisional applications filed within three months of the date on which acceptance of the parent application is advertised in the Australian Official Journal of Patents may be directed to any subject matter disclosed in the parent specification as filed. In contrast, the claims of a divisional application filed after the expiration of the three month advertisement period, but before the grant of the parent, are further restricted by section 79B(1)(b) to subject “falling within the scope of the claims of the accepted specification“ of the parent.The present case is concerned with a divisional application governed by section 79B(1)(b) where the Court was asked to consider whether the claims of the divisional did indeed fall within the scope of the accepted claims of the parent specification.
Facts of the case
The Federal Court ('FC') Case ( FCA 507) GE BetzDearborn Canada Company ('GE') filed Australian Patent Application No. 2004203855 ('the divisional') on 12 August 2004 claiming divisional status from Australian Patent Application No. 199666528 ('the parent') which was advertised as accepted on 3 February 2000. As the divisional application was filed more than three months after acceptance of the parent application was advertised, the divisional was subject to section 79B(1)(b).
Memcor Australia Pty Ltd ('Memcor') opposed the grant of the divisional, alleging that the divisional was for an invention that did not fall within the scope of the claims of the parent. Both the parent and the divisional relate to a vertical skein of hollow fibre membranes and a method of maintaining clean fibre surfaces for the purpose of microfiltration. The two patent specifications differ in the claims and the consistory clauses.
The Patent Office at first instance dismissed the opposition on the basis that claim 1 of the divisional was considered to fall within the scope of omnibus claim 16 of the parent which reads:
“16. A gas-scrubbed assembly substantially as hereinbefore described with reference to the accompanying drawings.“
The present case is an appeal from the Patent Office decision which was ultimately unsuccessful. The Federal Court (FC) dismissed the appeal allowing the divisional to proceed to grant, but did so based on a finding that claim 1 of the divisional fell within the scope of claim 1 of the parent. While not being necessary for the purpose of deciding the case, the FC remarked that claim 1 of the divisional also fell within the scope of omnibus claim 16.
To determine whether the divisional satisfied section 79B(1)(b), the FC adopted a global approach by comparing the claims of the divisional with the claims of the parent. That is, instead of focussing on the meaning of different words within the compared claims, the FC considered it more appropriate to focus on the meaning of the entire claim which contained the words. However, contrary to the approach taken by the Patent Office, the FC considered that the proper approach was to initially compare the whole of claim 1 of the divisional with the whole of claim 1 of the parent. For example, claim 1 of the parent refers to the headers of the defined microfiltration membrane device being disposed in a “vertically spaced-apart relationship within said substrate“. Claim 1 of the divisional refers to the headers “disposed in vertically spaced apart relationship“ without specifically indicating that they are within the substrate. However the latter does require “said fibers, said headers and said permeate collection means together forming part of an integrated combination of elements and adapted to be all submersible below the surface of the substrate…“. On this variation between the claims the FC accepted GE's submission that the “said substrate“ in claim 1 of the parent is notional, in the sense that it is a substrate for filtration of which the device is suitable. Claim 1 of the divisional also requires the additional feature as recited above and since both claims are to devices rather than a manner in which they are used, it follows that in both cases the device is adapted so that the headers can be within the substrate. Accordingly, in relation to this identifiable difference between the language of claims, claim 1 of the divisional was not considered to fall outside the scope of claim 1 of the parent.
In the course of the comparison, the FC referred to a number of general rules of claim construction. The following more specific principles also emerge from the FC's judgement:
- section 79B(1)(b) does not require that there be an identical claim of the same scope in the parent application for the divisional application to satisfy the test;
- the fact that the claims of the divisional patent specification are worded differently to the claims of the parent patent specification does not necessarily mean that the applicant intended to claim a broader monopoly in the divisional patent specification as there are numerous explanations possible for such textual differences;
- if the opening words of a device claim are followed, between two commas, by a description of an application of the device (e.g., “A microfiltration membrane device, for withdrawing permeate from a multicomponent substrate, said membrane device including …“), then the invention should be construed as a device per se (i.e., a device suitable for the application described) rather than a device in use (i.e., a device only when used for the application described);
- the omnibus claims of the parent patent specification need only be considered for the purposes of section 79B(1)(b) if the claims of the divisional patent specification do not fall within the scope of the other (non-omnibus) claims of the parent patent specification; and
- there is no authority for the proposition that omnibus claims should be read as if they replicate all other claims but are narrowed to the specific embodiment in the drawings. Rather such clauses constitute claims for the preferred embodiments of the invention understood in light of the drawings. While some cases may involve a narrow construction, the construction will depend on the context of the specification and the nature of the drawings to which the clause refers.
Application for Leave to Appeal to the Full Federal Court ('FFC')
Under section158(2) the Act imposes a requirement that an appeal may be brought from a decision of a single judge of the FC given on appeal from a decision or direction of the Patent Office in relation to an opposition only with the leave of the FFC. This means that an appeal in this instance to the FFC is not automatic. In a recently handed down decision ( FCAFC 163 – 20 November 2009) the FFC refused to grant Memcor leave to appeal on the grounds that the primary judge made no error.
Importantly, the FC confirmed that the penalty for non-compliance with section 79B(1)(b) is the loss of priority right. Accordingly, if found to contravene section 79B(1)(b) it is likely that the claims of the divisional would have been found to lack novelty and an inventive step in light of the parent application.
Finally, while certain features of the parent and divisional claims were worded differently, these textual differences were ultimately resolved in favour of GE by reference to expert testimony. Because of the vagaries associated with litigation it is possible that the result may have been decided against GE had the testimony been presented to the Court differently. Accordingly, to minimise any complications in this regard applicants should try to maintain consistent claim language between the parent and divisional claims if relying on section 79B(1)(b).