The new "support" requirement for patentability is one of the many changes brought into Australian Patent Law by the Intellectual Property Laws Amendment Act (Raising the Bar) 2012 (Cth) on 15 April 2013. These changes are intended to raise the standards of Australian Patents by curtailing the scope of inappropriately broad claims.

However, the importation of this European-type “support” requirement into Australian Patent Law may well have opened the door to a Trojan horse. Infected with conflation issues, the European approach to considering what constitutes adequate support for a patent claim does not offer a coherent example that can be practically applied by the Australian Patent Office or by the Australian Courts.

Without any guidance being provided on how to distinguish between the two requirements, Australian Patent Examiners are likely to inappropriately raise objections for both lack of support and lack of sufficient disclosure, based on the same reasoning. Similarly, parties attempting to oppose Patent Applications or to revoke granted Patents in Australia are now faced with establishing the nature of the particulars upon which to adequately base an allegation of lack of support by trial and error.

Instead of reducing legal uncertainty, the harmonisation of Australian Patent Law with its European counterpart has spawned new obstacles in the practical application of patentability requirements in Australia.

The incomplete harmonisation of Australian Patent Law with that of Europe

The focus of the Raising the Bar reforms was to align many of the internal validity grounds with their counterparts in Europe and the United States. The changes were aimed at ensuring that only Australian Patents with appropriate claim scope are allowed to proceed to grant. However, the approach has been piecemeal rather than holistic, with attention being focused more on patentability requirements during examination than on the corresponding grounds of opposition and revocation. The result, at least with respect to the support requirement, is that, unlike in Europe with which Australian law has ostensibly been harmonised, the ground of "lack of support" is now available in Australia as a ground of attack in both Opposition Proceedings and Revocation Proceedings. Accordingly this “support” requirement will now play a greater role in Australian Patent Law than it has played in Europe.

The effect of replacing the concept of "fairly based" with "support" in Australia

Previously, the claims of an Australian Patent were required to be "fairly based" on the matter described in the Specification. In practice, the claims were regarded as being fairly based if at least one embodiment, falling within the scope of the claims, was described in the Specification. It was not considered to be a requirement to describe every single embodiment falling within the scope of the claims.

Although the term "fairly based" is not defined in the Patents Act 1990, the meaning of this previous requirement was comprehensively assessed by the High Court of Australia in 2004 in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2007] HCA 21. In this case, the High Court clarified the test as requiring "a real and reasonably clear disclosure" of the feature, having regard to the description of the invention in the Specification “as a whole”. Since then, a large body of case law has developed in which the fair basis test has been meticulously applied by both the Australian Patent Office and the Australian Courts.

The new European-type support requirement, which has replaced the previous fair basis requirement, is an unknown quantity. It is also not defined in the Patents Act 1990 and it will be left to the Australian Courts to provide both an interpretation of the new requirement and to develop a new test for it. However, it may be some time before we see such a new test, since it will require a “new Act” case to proceed through the Courts. In the absence of any guidance as to the meaning of the term “support”, Australian Patent Examiners are likely to follow a European approach in examining Australian Patent Applications filed after 15 April 2013. So how does Europe approach the issue?

The imported European support requirement is infected with conflation issues

In Europe, an objection of lack of support under European Patent Convention (“EPC”) Art 84 during the examination process is considered to be related to an objection of insufficient disclosure of the invention, under EPC Art 83, the reasoning being that the disclosure of the invention is insufficient to enable a skilled person to carry out the alleged invention over the full breadth of the claims. The requirements of sufficient disclosure and support are both considered to reflect the principle that a patent claim should be commensurate with, or be justified by, the technical contribution to the art.

The Guidelines for Examination published by the European Patent Office (EPO) state that the extent to which an invention is sufficiently disclosed is highly relevant to the issue of support, such that whether the objection is raised as a lack of support or as insufficient disclosure is regarded as unimportant in the examination process. See the Guidelines for Examination in the EPO, section f.iv.6.4: "Lack of support vs. insufficient disclosure". Importantly, although objections on the grounds of lack of support and insufficient disclosure may be raised during the examination process in Europe, only the latter ground is available as a ground of Opposition and Revocation - see EPC Article 100 (grounds for Opposition) and Article 138 (grounds for Revocation). As such, the ground of lack of support has not been extensively considered by European Tribunals and Courts and any test for the support requirement has been slow to develop.

Judicial consideration of the ground of lack of support has occurred, but usually through a conflated vehicle involving the ground of lack of sufficient disclosure. In the EPO Technical Board decisions in EXXON/Fuel Oils, T409/01 [1994] EPOR I and GENENTECH I/Polypeptide Expression, T292/85 [1989] EPOR I, the EPO Technical Board expressly conflated the operation of the EPC article requiring support for the Claims (EPC Article 84) with the EPC Article 83, requiring a sufficiently clear and complete disclosure, and regarded both requirements as embracing the same principle. This has entrenched the conflation of the two concepts of sufficient disclosure and support in European Patent Law.

The situation in Australia is quite different. Unlike its European counterpart, the ground of lack of support may be raised during prosecution of a Patent Application, as well as during Opposition Proceedings under Section 58 and Revocation Proceedings under Section 138. However, unlike the previous "fair basis" requirement in Australian Patent Law, which has been intensively scrutinised by the Australian Courts, the new support requirement is yet to be interpreted by the judiciary. Any test for the new support requirement in the Australian context awaits development by the Australian Courts. Such judicial development must necessarily be carried out without recourse to any persuasive body of European Technical Board case law.

So, how will the Australian Courts resolve patent disputes involving the ground of lack of support? Will the new support requirement suffer the same fate as its European counterpart and become conflated with sufficient disclosure in Australia too?

A Frankenstein test for the new support requirement in Australia could develop

According to the Examination Memorandum, the new support requirement is intended to encompass two conceptual aspects of support. Not only must the Description provide a basis for each claim, but the scope of the claims must not be broader than is justified by the extent of the Description, drawings, and contribution to the art.

It is possible, although unlikely, that the Australian Courts may develop a literal

quantitative test for measuring the extent to which a patent claim in Australia is supported by the Description, by comparing each claim with the number of specific embodiments provided in support of it. However, while such a literal test may be relevant in instances of Markush claims and selection patent claims, its application would be limited by the merits of the case. Any limitation of patentability requirements to the technology involved would contravene TRIPS norms.

It is more likely that the Australian Courts will develop a qualitative test. However, Australian law-makers and the Australian Courts have historically disagreed on the issue of support for patent claims. While a legislative drive to a full-scope requirement of support for patent claims has resulted in the Raising the Bar reforms, the judiciary has historically been opposed to just such a development. In the leading decision on "fair basis", Lockwood supra, the proposal of full-scope support as the standard for fair basis of an Australian patent claim was forcefully rejected by the High Court, which instead laid down a test of form rather than substance. Accordingly, the claim was regarded by the High Court as fairly based if there was matter included in the Specification, which demonstrated that the invention disclosed was not narrower than that which was claimed.

Realistically speaking, it is likely that the judiciary will still be of the same mind when faced with a precedent case for establishing a standard support in the Australian context. In light of the strong opinions many Australian judges are known to have on the subject, recourse may be had to the considerable body of Australian case law developed for the related, albeit superseded, requirement of "fair basis". As such, it is possible that new life may be breathed into the old Australian concept of "real and reasonably clear disclosure" if the Courts are able to link this concept with the new requirement of support. We may therefore be heading towards, not so much a European interpretation of the new support requirement, but a Frankenstein-like development of a new test within the Australian context.

Take-home message

The support requirement is common to the examination process of Patent Applications in both Australia and Europe. However, it plays a very different role in third-party proceedings against the grant of patent rights in these countries.

In their attempts to redress what is perceived as being weak patentability standards, Australian law-makers may well have unintentionally imported undesirable aspects of legal uncertainty, which have previously been developed in European practice and which remain unresolved, into Australian law. In particular, the importation of the European support requirement into Australian law may have unintentionally brought with it a conflation of this requirement with a requirement for sufficient disclosure.

Practical steps that Patent Applicants can take in the meantime to satisfy the new support requirement

Australian Patent Examiners intend to follow a European approach in examining Australian Patent Applications for support. It is therefore likely that support requirements will be confused with sufficiency of disclosure requirements, resulting in a simultaneous raising of objections for both lack of support and lack of sufficient disclosure. Such objections may be most appropriately addressed in a similar manner to the approach taken in addressing corresponding European objections.

Patent Applicants with co-pending Applications in Europe and Australia may be well advised to delay responding to any Australian lack of support objections until the outcome of responses to corresponding objections in Europe is known. If similar objections are successfully addressed in Europe, then the drawing of an Australian Examiner’s attention to this circumstance may be sufficient to overcome similar lack of support objections raised in Australia. However, such an approach must take into account the fact that Applications that are examined with respect to the new support and sufficient disclosure requirements are also subject to a considerably reduced period for overcoming the Examiner’s objections. Specifically, the period has now been reduced from 21 months to 12 months.

Australian Patent Applicants, having no corresponding applications in Europe, may need to consider taking greater care when drafting the Specification, so as to include a description of as many embodiments as possible across the full scope of the claims. If this is not possible, then it may be worth considering the filing of one or more Divisional Applications of narrower claim scope, which cover commercially valuable embodiments of the invention and which an Australian Examiner is more likely to regard as meeting the new support requirement.