November 26, 2020

Allowable – the Federal Court of Australia clarifies the law on amendment

In the first of a series of articles on Australian and New Zealand law, we report on the current law on amendment allowability following Australia’s “Raising the Bar” reforms, and how that law has since been applied by the Australian Patent Office.

In CSIRO v BASF Plant Science GmbH1 the Federal Court of Australia was asked to decide whether certain claim amendments were allowable. In reaching its decision, the Court applied UK and European law – a predictable but welcome clarification of the approach to take since the Raising the Bar reforms. As referred to by Beach J in his decision, the Explanatory Memorandum2 provided by legislators of the Raising the Bar reform clearly signaled that approach to the new version of section 102 of the Patents Act 1990, which deals with amendment allowability:

In contrast to Australia, other countries’ patent laws require the disclosure requirements to be met at filing and do not allow the addition of any material that could not be directly derived from the information in the specification at filing… this result is preferred to the current Australian position.

In short, the limbs for determining whether a proposed amendment would claim or disclose new matter, such as by the introduction of an intermediate generalization, for applications subject to the current version of section 102 are:3

First, as has been pointed out, the test is a strict one.

Second, subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed.

Third, the required disclosure may be express or implied, but on any view must be clearly and unambiguously so. In this regard, a patent applicant is not permitted to add by amendment matter simply because it would have been obvious to the skilled person.

Fourth, context is important. A patent applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context. So, the concept of intermediate generalisation as discussed in the UK authorities applies to s 102(1) in its construction and application.

The Australian Patent Office has since applied CSIRO v BASF Plant Science GmbH in three instances,4 but in each case has taken a less formulaic approach to the new standard, instead adopting the reasoning of Jacob J in Richardson-Vicks Inc’s Patent5 (also cited in CSIRO v BASF Plant Science GmbH) namely:

“The correct approach when considering whether an amendment would result in the specification claiming or disclosing new matter is to ask whether the person skilled in the art would, on looking at the specification as proposed to be amended, learn anything about the invention which they could not learn from the complete specification as filed”.

So for patents/applications for which examination was requested on or after 15 April 2013 the law has been clarified, and our UK and European colleagues should be able to apply the same, familiar principles to their Australian amendment strategy.

Possible consequences

It is important to note that simply getting an amendment allowed by the Australian Patent Office does not indemnify a patent applicant or patentee against a subsequent challenge by a third party that the amendment should not have been allowed. In invalidity proceedings, for instance, a court may be asked to review whether such an amendment should have, in fact, been allowed. If the court determines that the amendment was not allowable, then the priority date of the amended claim will be deferred to the date that the amendment was made. Such deferment will typically lead to serious invalidity issues, particularly on the basis that the invention defined by the amended claim was obvious in light of the earlier publication of the very same application.

There are a number of strategies that can be used to mitigate this risk and, as such, it is always recommended to seek considered advice from a patent attorney with significant prosecution and litigation experience before amending a patent specification. We look forward to talking with you.

In the second article in this series we will highlight a troubling aspect of Beach J’s decision in CSIRO v BASF Plant Science GmbH, suggest how it could be used to invalidate a large number of patents granted under the pre-Raising the Bar, and report on a recent example where it has gained traction.

In subsequent articles we explain the position in New Zealand under both the Patents Act 1953 and Patents Act 2013.

1. [2020] FCA 328.
2. Item 29: Amendments not allowable; Intellectual Property Laws Amendment (Raising The Bar) Bill 2011.
3. CSIRO v BASF Plant Science GmbH [2020] FCA 328, [215]-[220].
4. EMD Millipore Corporation v Asahi Kasei Medical Co., Ltd. [2020] APO 39 at [8]; Pharmacosmos Holding A/S v American Regent, Inc. [2020] APO 36 at [19]; and Grahame Smith [2020] APO 21 at [55].
5. [1995] RPC 568 at [576].

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