In many jurisdictions, the failure of a patent applicant to disclose the best method/mode known to it of performing an invention is no longer a ground for refusing a patent application or revoking a patent claiming that invention.

However, this ground remains available under Australia’s Patents Act 1990 (Cth) (Patents Act), and is one that is being increasingly relied upon in Australia, often to the peril of patent applicants/patentees.

Two recent decisions of the Full Court of the Federal Court of Australia and the Australian Patent Office provide cautionary tales on the importance of carefully identifying the invention described in an Australian patent specification and ensuring that the best method of performing that invention has been disclosed in that specification.

Sandvik v Quarry Mining

In Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138, the Full Court affirmed a decision of a single judge of the Federal Court1 that Sandvik’s patent specification directed to an extension drilling system invention (with mining applications) failed to satisfy Australia’s best method requirement, and that the claims in issue should be revoked.

The evidence established that Sandvik had developed a particular ‘sealing member’ for use in conjunction with its extension drilling system that was better than any such member described in the specification.

Noting that the appropriate starting point was ‘to identify the invention described in the specification as a whole’, the Court held that a sealing member was ‘necessary and important to perform the invention (or carry it into effect)’ and that it was therefore incumbent on Sandvik to include details of its better sealing member in the specification.

Kineta Inc

In Kineta Inc [2017] APO 45, the Deputy Commissioner of the Australian Patent Office decided that an application claiming certain anti-viral compounds did not disclose the best method known to the patent applicant (Kineta).

Kineta had arrived at the anti-viral compounds the subject of its patent application by high throughput screening of a library of compounds that it purchased from a commercial supplier (Life Chemicals). Kineta did not set out any method of preparing the compounds in its specification but argued that because it did not itself know how they were made, it had not failed to satisfy the best method requirement.

The Deputy Commissioner accepted that Kineta did not know how the relevant compounds were made. However, after rejecting Kineta’s contention that an uninventive person skilled in the art would have known how to make them, the Deputy Commissioner decided that it was incumbent on Kineta to identify the commercial supplier of its compounds (Life Chemicals) in the specification in order to satisfy the best method requirement, which Kineta had not done.

A key aspect of the Deputy Commissioner’s reasoning was his view that the claimed invention, when properly considered, did not simply lie in the structure of the claimed compounds, but also in ‘the fact that they can be made.’ As such, ‘for the public to have the full benefit of the invention they must be able to prepare the compounds and then use them for their beneficial properties.’

Conclusion

Patent applicants should pay close attention to Australia’s best method requirement, ensuring that they properly identify the invention claimed in the specification, and disclose the best method of performing that invention known to them