Patents – amendment – application to amend – fair basis – whether “discrete, unitary disclosure” of combinations of features necessary

United States Gypsum Company v CSR Building Products Ltd [2017] FCA 595

The applicant (USG) is the patentee of an invention relating to industrial and building products made from gypsum, the advantage of the invention being a significant reduction in the dust generated in their manufacture. After the patent specification was accepted, USG sought to make a number of amendments that substituted various claims and figures. The respondent (CSR) objected to those amendments on the ground of a lack of fair basis, and was successful. USG appealed the decision of the delegate to uphold CSR’s objections.

At that time (that is, prior to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth)), s 102(1) of the Patents Act 1990 (Cth) provided that amendments of complete specifications were not allowable “if, as a result of the amendment, the specification would claim matter not in substance disclosed in the specification as filed” (emphasis added). Similarly, s 102(2) disallowed amendments if, “as a result of the amendment”, a claim of the specification would fall outside the scope of the specification before amendment, or otherwise would not comply with the succinctness and fair basis requirements of ss 40(2) or 40(3).

The delegate grouped the proposed amendments in accordance with 18 particular features found, in various combinations, in the amended claims. For each feature, the delegate adopted an approach whereby the specification was examined for a discrete disclosure of the relevant claimed combination of features. That approach led to the determination that none of USG’s amendments should be allowed on the basis of ss 102(1), 102(2) and 40(3).

The appeal before Moshinsky J was undefended, CSR submitting to any order made by the Court and the delegate declining to appear. The key issue was summarised by his Honour, based on relevant authority, as “whether there is ‘a real and reasonably clear disclosure’ in the relevant specification of what is claimed in the amended claim, such that ‘the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification’”. This involved a consideration of whether it was possible to disclose claimed matter by drawing together different parts of the specification.

His Honour accepted USG’s contention that the prohibition against making a “mosaic” of disparate parts of a specification in answer to challenges to novelty or inventive step does not apply to the determination of fair basis and whether there has been an “in substance” disclosure for the purposes of s 102(1). In a fair basis case, however, the real question was whether there has been a “real and reasonably clear disclosure”.

In the case of each of the relevant features, his Honour answered this question in favour of USG, and allowed the appeal. In some cases, his Honour held that the delegate had erroneously searched for a “discrete, unitary disclosure of the claimed combination of features”, rather than looking to the “specification as a whole” and finding disclosure of the particular feature. Further, for those features that merely narrowed previous claims, the delegate failed to attend properly to the limitation in s 102 that the lack of fair basis arise “as a result of the amendment”; claims that are more limited in scope generally will be fairly based on the original specification.