Raising the Bar on Australian Patent Drafting Standards

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 introduced numerous reforms to the Patents Act 1990, many of which have been designed to lift the standards required for a valid patent to levels comparable with Australia’s major trading partners, such as the US and countries of the European Union.

A number of the reforms are directed principally to the quality of the specification, and to ensuring that the scope of the patent monopoly claimed by the applicant is justified by the extent of the disclosure provided in the specification. The skill of the draftsperson thus plays a role in ensuring that the applicant is able validly to claim the full extent of patent protection to which they are entitled. Conversely, if a patent specification is inadequate then the applicant may be prevented from claiming a broad scope of protection, even in the absence of pertinent prior art.

Fortunately, most Australian patent attorneys are accustomed to drafting specifications to the standards required by the major foreign jurisdictions. Now, however, those same standards must be applied even when preparing patent specifications that will be filed only in Australia.

What has changed?

The main reforms in the Raising the Bar Act affecting the required standards of disclosure are:

  • a complete specification is now required to disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art;
  • the disclosure required to secure a priority date — for example, in a provisional application or a foreign application from which priority is claimed under the Paris Convention — must also be clear enough and complete enough for the disclosed invention to be performed by a person skilled in the relevant art;
  • the claim(s) must be supported by the description; and
  • a complete specification is required to disclose a specific, substantial and credible use for the invention.

The first two requirements above are often referred to as ‘enablement’. They demand that the filed specification, or the disclosure in an earlier priority document, provide a sufficient teaching to enable a non-inventive skilled worker in the field of the invention to implement the invention, along with all relevant variations, across the full scope of the claims. The third requirement, for ‘support’, has replaced the old ‘fair basis’ test, according to which the description needed to provide only a ‘real and reasonably clear’ disclosure of the invention as claimed. The new support standard is derived from the language of European legislation and is intended to impose a requirement that the claims must not be broader than is justified and must be consistent with what is described.

The fourth requirement above extends the requirement for ‘utility’ or ‘usefulness’ (without limiting in any way the existing tests developed over the years by the courts). The new requirement for a ‘specific, substantial and credible use’ is particularly pertinent to inventions in the chemical, pharmaceutical and biotechnology fields, where it limits ‘speculative’ claiming.

The new provisions apply to all patent applications filed on or after 15 April 2013, and all earlier-filed applications for which a request for examination was not filed prior to 15 April 2013.

Impact of reforms on drafting standards

Patent specifications drafted to satisfy the requirements of major foreign jurisdictions, such as the US and Europe, will generally meet the new Australian standards. In the past, however, an applicant might have expected that the description in such a specification would support broader claims in Australia. That is no longer the case.

Practitioners drafting patent specifications principally for filing in Australia must now take additional care to ensure that the new requirements outlined above are satisfied.