Patentability criteria vary from one country to another often based on local statutory requirements and/or judicial rulings. Australia is no exception and as such you may have observed your Australian Patent Attorney making amendments and have thought...why?
Below we highlight some of the typical amendments you may have encountered and give a brief explanation as to their rationale:
1. Removal/Modification of "object" statements.
An object statement in a patent specification is deemed to be a "promise" of what the invention achieves. However, if the promise of the invention is shown by evidence not to have been fulfilled over the full scope of the claimed invention, the claim(s) may be deemed invalid for lack of utility.
Other unexpected consequences have also arisen due to such statements. For instance, in Uniline Australia Ltd v Sbriggs Pty Ltd  FCA 222, the object statement read: "It is an object of the invention to provide a bi-directional clutch which avoids the need for a plurality of helical springs and complex configuration of the second shaft." (our emphasis). The issue surrounded the meaning of the term "and" in the context of considering the scope of the claims after post-grant amendments were made. While lack of utility was not at issue, the presence of the object statement hindered the patentee's attempt to obtain a broader interpretation of the claimed invention, which was subsequently found not to be infringed.
In contrast, at first instance in Ronneby Road Pty Ltd v Esco Corporation  FCA 558 the patent was found invalid for lack of utility. In this case the patentee (according to the specification) "promised" that the invention could deliver no fewer than six advantages. The Court concluded that while some of the advantages could be realised, no claim could fulfil the promise of providing all six. On Appeal, in the Full Federal Court (Ronneby Road Pty Ltd v Esco Corporation  FCAFC 46) the initial decision was reversed, but only because the six recited advantages were not to be considered to be a set of promises that applied to all claims. The Full Court nevertheless stated that if the promise of the patent specification had been construed as a composite promise involving all six advantages, then a failure for any one of the six advantages to be fulfilled would have rendered the claimed invention invalid for lack of utility.
In view of these decisions, you may have observed your Australian attorney removing "object" statements, or at least making amendments to use more moderate language to clarify that the totality of the advantages may be achieved only in certain embodiments.
2. Addition of "consistory statements".
Consistory statements are usually added to the description in the section where the main "summary of invention" appears. The main summary of invention is typically of the same wording and scope as the originally filed independent claim(s). During prosecution the scope of the claims may be modified, which may result in inconsistency between what is claimed and what is described. Ensuring correlation between the consistory statements and the amended claims is helpful in demonstrating consistency between the body of the specification and the claims to better ensure internal fair basis/support.
3. Insertion of a paragraph defining the word "comprising".
The presence of certain English words in a claim (perhaps during a translation) may have the effect of causing the claim to be construed differently from what was intended by the patentee. The word "comprising" in a claim is usually intended to provide for a broad interpretation in an inclusive sense, such that the claim is not to be limited only by the defined combination of features as would be understood by use of the phrase "consisting of". A "comprising" paragraph which clarifies that 'comprise' is, where context permits, to be interpreted non-exhaustively, is therefore often inserted into the description by Australian attorneys.
The main reason for this is that in General Clutch Corp. v Sbriggs Pty Ltd  38 IPR 359, it was held that the term "comprise" had an exhaustive meaning, such that its use was taken to exclude the presence of other integers. In contrast, in Fresenius Medical Care Australia v Gambro  FCAFC 220, the word was found to have a non-exhaustive or inclusive meaning. In the Fresenius decision, and the more recent decision in Actavis Pty Ltd v Orion Corporation  FCAFC 121, it is evident that while the inclusion of the "comprising" paragraph may influence a Court to take a broader interpretation, this outcome is not guaranteed as the ultimate construction of claim scope will depend on the teaching in the specification when read as a whole.
4. Insertion of a paragraph defining "prior art''.
In drafting the background section of a patent specification, it is often the case that references to the prior art are included. However, in Bristol-Myers Squibb Co v F H Faulding & Co Ltd  41 IPR 467, the Court determined that prior art documents referred to in the specification formed part of the common general knowledge in the patent area. This admitted "common general knowledge" was then able to be combined with other prior art teachings to demonstrate obviousness of the claims.
In Australia the practice of combining (or "mosaicing") different pieces of prior art in an attempt to demonstrate obviousness is heavily scrutinised by the Courts and Patent Office to ensure that obviousness is not found based upon hindsight reasoning. In contrast, the assessment of obviousness based on a combination of a single piece of prior art and the common general knowledge of the skilled person is quite common.
The inclusion in the specification by Australian attorneys of a paragraph that disclaims that admitted prior art documents form part of the common general knowledge in the art, is considered to provide some protection against a contrary finding by the Patent Office or the courts.
5. Amendment to claim introduction.
Section 40 of the Patents Act 1990 requires that the specification end with a claim or claims defining the invention (emphasis added). Insertion, immediately before the claims, of the wording "'The claims defining the invention are as follows" may reduce any risk of non-compliance with this formality requirement.
6. "Said" vs "The"
Some Australian practitioners may replace "said" with "the" in the claims in view of Product Management Group Pty Ltd v Blue Gentian LLC  FCAFC 179 (14 December 2015). In this decision there was an issue regarding construction of the term "said" in the main claim. Whether or not "said" should be given a strictly literal interpretation came down to applying a purposive construction to the invention. The Court was of the view that in reading the claims in the context of the specification as a whole, the skilled person would have recognised that the literal meaning of "said" was not being used.
7. Technology-specific amendments.
Life Sciences – Both method of treatment claims and Swiss-style use claims are allowable claim formats and both types of claims are recommended as they are considered to cover different infringing activities.
Engineering – Reference numerals in claims are generally removed as they may be interpreted in an unintended manner to limit claimed features to specific embodiments described and illustrated in the specification.
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.