Australia: Best Method Requirement Continues To Wreak Havoc

Last Updated: 16 May 2018
Article by Michael Caine and Amanda Lee

In Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138 ("Sandvik") the Full Federal Court recently revisited the requirement for patent applicants to disclose in their specifications the best method known to them at the filing date for performing the claimed invention.  Additionally, the Australian Patent Office has considered the application of the 'best method' requirement in a number of recent decisions, including Smith Light Pty Ltd v Golight Pty Limited [2016] APO 37 ("Smith"); Merial New Zealand Limited v Jurox Pty Ltd [2017] APO 5 ("Merial"); and Kineta, Inc. [2017] APO 45 ("Kineta").

Australia's best method requirement had received little judicial consideration prior to the Full Federal Court's 2016 decision in Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27.  In that case, the Full Court held the patent to be invalid for failing to meet the best method requirement, and subsequent attempts to amend the specification to remedy the deficiency were declined. While the application of Australia's 'best method' requirement ultimately turns on the facts of a given case, the Full Court's decision in Servier highlighted the fatal consequences of failing to include a description of the best method in patent specifications filed in Australia – a clear distinction from other jurisdictions. Application of the best method requirement in Australia also now seems to differ from the way the best method (or best mode) requirement has been applied in the United States. In particular, even when the claimed invention is a product, it may be necessary in particular circumstances to disclose the best way of making that product known to the applicant at the filing date.

A full discussion of Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 is available here.

Case 1 - Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd ('Sandvik')

The patent at issue in Sandvik was directed to an extension drilling system for use in drilling bores. Evidence was presented at first instance that one of the "real issues" to be addressed during development was the design of an effective water seal. However, the technical drawings, which pre-dated the filing of the complete application and which described an improved sealing arrangement for use with the drilling system, were not disclosed in the specification at filing. As a consequence, the judge at first instance found that the omitted sealing arrangement was not merely a minor feature, but was instead the superior design.

On appeal, Sandvik highlighted that the way in which the invention as claimed solved the problem was not directed to any particular form of water seal.  However, the Full Federal Court rejected this argument, upholding the decision of the primary judge that the best method involved the use of a specific type of water seal which was not disclosed in the specification at filing.  With regard to the omitted seal, the Full Court restated the primary judge's findings that:

We are not here dealing with some minor or incidental dimension of what was perceived by the inventors as the best method of performing the invention: as Mr Weaver said, this sealing aspect was 'a real issue which needed to be overcome'.

In considering the 'best method' requirement, the Full Court clarified that the correct approach is to:

  1. Identify the invention described (not claimed) in the specification as a whole;
  2. Determine whether the allegedly omitted part is necessary and important to perform the invention (or carry it into effect); and
  3. Where the specification purports to address the best method requirement, determine whether the Applicant described the best embodiment known to it.

The decision in Sandvik again highlights that patent applicants in Australia must ensure that the description of embodiments in a patent specification is updated prior to filing. Sandvik's omission of the superior water seal rendered the patent invalid, even though the sealing member did not form part of the invention as claimed.

Case 2 - Smith Light Pty Ltd v Golight Pty Limited [2016] APO 37 ('Smith')

The patent application at issue in Smith was directed to a portable light assembly.  Acceptance of the application was opposed before the Australian Patent Office on a number of grounds, including failure to disclose the best method.  In the proceedings, the opponent argued that "optimised design arrangements relating to for example, the specific locking and release means, and the electronic and material specifications represent the best method of performing the invention", and the applicant had withheld these design arrangements at the time of filing.  Drawing on the Full Court's findings in Servier, the opponent suggested that the vague disclosure of a 'locking means' were no more specific and akin to the omitted salification methods utilised and known to the patentee at the filing date in the Servier case.

However, the Delegate found that the invention as described in the whole of the specification resided in the interrelationship between the claimed components rather than the individual elements themselves.  As such, the Delegate held that any lack of description of the specific features identified by the Opponent did not result in the application falling foul of the best method requirement, as those individual features were not of themselves the described invention.

Case 3 - Merial New Zealand Limited v Jurox Pty Ltd [2017] APO 5 ('Merial')

At issue in Merial were three related applications claiming anthelmintic compositions.  During opposition proceedings before the Patent Office, the opponent argued (and Jurox did not counter) that the best method of performing the invention involved the use of a product called "Q-drench", the method of preparation of which was known to the applicant before the filing date.

While the specification included various examples of the preparation of anthelmintic compositions, in evidence presented to the Delegate it was demonstrated that the preparation of Q-Drench specifically required that the pH be adjusted to 5.3 to 5.5 on the day of preparation.  None of examples however described such a pH adjustment step.

In light of this evidence, the Hearing Officer concluded that all three applications "lack[ed] the critical steps (pH adjustment) which [were] part of the best method of performing the invention which was known to the applicant at the filing date."  But in this case, and in view of the fact the applications were all subject to the more lenient amendment provisions prior to the Raising the Bar Act (that came into effect in April 2013), the Officer indicated that the three applications could be amended to include the missing information about pH adjustment.

While the decision was initially appealed to the Federal Court, the matter was settled prior to being heard.  The amendments were subsequently allowed and the patents proceeded to grant.

Case 4 - Kineta, Inc. [2017] APO 45 ('Kineta')

The patent application at issue in Kineta was directed to chemical compounds and their use for treating viral infections, such as RNA viral infections.  During the course of examination, the Examiner formed the view that the specification failed to disclose the best method of performing the invention.  The applicant requested a hearing before the Patent Office to resolve the matter. 

Kineta's application was subject to the more stringent provisions of the Raising the Bar Act.  Prior to the introduction of the Raising the Bar Act, the 'best method' requirement was not a ground of examination.  However, with the new legislation, Australian Examiners may now consider whether the best method known to the applicant of performing the invention is disclosed in the complete specification.

The single outstanding ground of objection considered by the Hearing Officer was whether the best method of performing the invention had been disclosed.  The complete specification detailed a number of compounds which were simply described as "available", together with data relating to their associated antiviral activities.

In considering the invention disclosed in the specification, the Hearing Officer suggested the invention lay both in the identification of new compounds and their use in the treatment of viral infections.  However, the examples recited in the complete specification did not provide any information about how the compounds might be prepared.

Kineta advanced two alternate arguments with respect to best method. The first argument was that a best method is implicitly disclosed as a person skilled in the art would have understood how to prepare the compounds. Alternatively, Kineta argued it had not withheld any information about the preparation of the compounds, since they were purchased from a third party contractor and not prepared by the applicant.

Despite expert evidence presented by Kineta, the Hearing Officer concluded with regard to the first argument that a person skilled in the art would not have appreciated how to prepare any of the compounds from a reading of the specification in the light of the common general knowledge.  With regard to the second argument, the Hearing Officer acknowledged that Kineta was not informed as to how the compounds they had obtained were prepared. He did find, however, that the applicant was aware that the compounds could be purchased from a contractor, but that this information was not included in the specification.  As such, the Hearing Officer maintained that the applicant failed to disclose the only method (and thus the best method) that the compounds could be purchased from the third party contractor.

Under the Raising the Bar Act, it is not possible to add matter to a specification and as such, Kineta had little recourse to address the deficiencies in their application.  However, it is noted that two new pending divisional applications were subsequently filed, the specifications of which have been updated to include both a general description of the synthesis of the compounds as well as details of the third party contractor who originally prepared the compounds. The new divisional applications are yet to be examined by the Patent Office.

Key lesson

These cases serve as another reminder of the fatal consequences for patentees who fail to satisfy the best method requirement under Australian patent law.  In view of the more stringent standards for amendment under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, as highlighted by the Kineta case, it is paramount that patent applicants in Australia ensure the best method known to them of performing the invention is included in the specification at the time of filing to avoid the ticking time bomb that is the 'best method' requirement under Australian law.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Madderns Patent & Trade Mark Attorneys
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Madderns Patent & Trade Mark Attorneys
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions