The Federal Court of Australia, in Sunnyfield Association v
Cronk  FCA 33, recently provided further evidence that
the fair basis requirement in Australia is being interpreted more
liberally. Fair basis is analogous to the European requirement of
sufficiency of description. A more liberal approach in this area is
likely to benefit patentees, and that was certainly the case here,
where the court upheld decisions of the Commissioner of Patents to
reject oppositions filed against the grant of each of two accepted
The court also affirmed the more recent approach of placing more
weight, for technical matters, on the decisions issued by the
Australian Patent Office. While there is not yet a doctrine of file
wrapper estoppel – any appeal from a Patent Office
decision to the Federal Court is a hearing de novo – it
could judicially develop if the present trends persist.
The subject matter of the patent applications relates to
adjustable reflective fittings for lights. The oppositions filed by
the respondent were essentially based on the assertion that the
earliest priority application did not provide a fair basis for the
claims in the later applications, because the priority document
asserted as the invention a combination of features that were not
to be found in the later claims. That is, the opponent was
attempting to read down the scope of the invention disclosed in the
earlier application to specific features in the claims of the
While the earliest priority application included a primary claim
with the feature of two reflective sheets being disposed at a
"substantially orthogonal angle", the Court concluded
that, elsewhere in the accompanying description, it was expressed
that this requirement was directed to "one form of the
invention", as opposed to all forms, and that the invention
disclosed need not be read down to include that feature. A claim in
one of the later applications included, instead of the term at a
"substantially orthogonal angle", the term
"transverse to each other". The Court found that this
claim was fairly based upon the priority document, notwithstanding
that "transverse to each other" was broader than at a
"substantially orthogonal angle".
Accordingly, the Court has clarified the principle that, in
Australia, the claims in a priority application – or, in
the case of a divisional application, the claims in a parent
application – need not be a bar to a later application
with broader claims gaining the priority benefit from the first
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.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
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”
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).