The Federal Court of Australia, in Sunnyfield Association v Cronk [2009] 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 patent applications.
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 priority document.
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 application.
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