Patent claims which do not find support in their underlying patent specification are deemed invalid, and as a consequence are entirely unenforceable. A patent owner, in other words, is not entitled to more than has been invented.

The test for whether or not adequate ‘support’ exists is thus of vital importance to patent owners. Recent radical reforms to the test set out in the Australian Patents Act 1990 (Cth) by implementation of the Raising the Bar Act now apply.

Existing Australian law of ‘fair basis’ is supplanted

Prior to the reforms, the requirement for support was framed as one of ‘fair basis’ of the claims upon the underlying patent specification as per subsection 40(3) of the Patents Act. The principles of fair basis authoritatively set forth by the High Court of Australia are quite straightforward: the description must provide a ‘real and reasonably clear disclosure’ of what is claimed. In general terms, a single example or embodiment has been considered adequate basis for a claim, and parity of language between the claim and the description is not essential.

New subsection 40(2)(a) requires that a complete specification must ‘disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’, and new subsection 40(3) that the claims be ‘supported by matter disclosed’ in the specification.

Uncertainty surrounds the new legislative language

The stated intention behind the new language is to leave behind established principles of fair basis to harmonise Australian requirements more closely with those that apply in the United Kingdom and Europe.

While there is an expectation that interpretation of the new Australian test for ‘support’ will follow established UK and European practice, this is far from assured. Australian courts are not bound by UK or European precedent. Patent owners are forgoing the relative certainty of the long time law of ‘fair basis’, and the Australian courts will need to grapple with whether or not to apply foreign precedents to the new Australian language, all in the context of other changes introduced by the Raising the Bar reforms.

Consequences for foreign owners of Australian patents

The stated intention of the new support requirements is to provide greater certainty for foreign owners of Australian patents because the new requirements for Australian patents more closely mirror those that apply overseas. European owners of Australian patents will find some familiarity in the new provisions. But support (also known as ‘enablement’ and ‘written description’) requirements in the United States are quite different, so there is no particular benefit to United States owners of Australian patents.

The reality is that foreign owners used to meeting UK and European standards will likely find little difference in the treatment of their Australian patent applications.

Consequences for Australian owners of Australian patents

Australian patent owners are encouraged to take greater care when preparing Australian patent applications. The revised requirements will undoubtedly demand a higher standard of compliance to ensure the validity of patent rights. This translates to the inclusion of more examples and more embodiments of an invention than previously. Having said this, the new standards are unlikely to present any particular problems for Australian applicants who routinely file patent applications to meet overseas requirements.

On which cases do revised support requirements apply?

Now that the Raising the Bar reforms are passed into law, the new support requirements apply to all applications that are filed henceforth. There is also a limited retrospective application of the new support requirements to all pending patent applications for which a request for examination was filed on or after 15 April 2013. The law of fair basis will however still pertain to patents for which the examination request was filed before 15 April 2013.