Raising The Bar – The Issue of Support in Australia
Dr Matthew Overett, Phillips Ormonde Fitzpatrick (Australia)
Following the 2012 Raising the Bar reforms, Australia’s Patents Act requires that patent claims are supported by matter disclosed in the specification. This means that the description must enable a skilled person to perform the invention across the full breadth of the claim without undue burden, and the claim scope must be commensurate with the contribution to the art. The stringent application of these principles by Australia’s courts has, in practice, significantly limited the extent of the monopoly that may be validly claimed by many patent applicants.
While claim breadth remains a primary concern, a recent Federal Court decision in Calix v Grenof  has confirmed that the support obligation, similar to the “fair basis” obligation prior to Raising the Bar, requires that the invention as claimed is consistent with the invention as described. Thus, a claim may be invalid for lack of support even when fully enabled.
Calix’s patent specification described methods of producing hydroxide slurries by hydrating a caustic precursor powder in water “just below or at” the boiling point, with excess heat of reaction thus removed with steam. Other sections of the description stated that the heat is removed by boiling the reaction mixture.
However, claim 1 required that the maximum reaction temperature was controlled “near the boiling point”. Both parties agreed that this meant below the boiling point. Such an interpretation was apparently necessary to Calix since claim 1 would otherwise have lacked novelty over various prior art documents teaching temperature control at the boiling point.
The judge found that the skilled person was enabled to produce a hydroxide slurry while remaining below the boiling point, since this was part of the common general knowledge. Hence, the claimed invention was sufficiently disclosed, even under the stringent post-Raising the Bar disclosure requirements. However, the claim 1 requirement to maintain reaction temperature below boiling was fundamentally inconsistent with the methods set out in the description. Claim 1 thus lacked support.
IP Australia’s Patent Manual of Practice and Procedure has now been updated to reference the following statement from the judgement:
Although discussion of s 40(3) is often focused on the breath of the claim, there may be some claims which lack support not because they are too broad, but because they define an invention that is materially different to what is described in the body of the specification. Hence, a claim that includes a feature not disclosed in the specification, or omits a feature that is disclosed, may lack support because the invention claimed is materially different from the invention disclosed. Whether or not the claim will lack support in such circumstances will depend on the proper characterisation of the invention disclosed in the body of the specification and the invention claimed.
The Calix decision further highlights the disclosure- and support-related pitfalls that Australian patent applicants must navigate since the Raising the Bar reforms. Commercially valuable and defensible claims depend on the quality of the supporting disclosure in the patent specification.