Support and sufficiency in Australia aligning more with European norms

A long overdue development that has taken some by surprise: the Full Court has weighed in upon the issue of sufficiency of disclosure, and affirmed that Australian patent claims should be enabled across their full scope. This represents a long awaited affirmation of the amendments to sufficiency requirements introduced by the Raising the Bar amendments enacted to the Patents Act (Cth) 1990 in 2013.

Patent professionals should remain always mindful to identify the essence of the invention and the relevant materials, ranges and other pertinent details. The decision found that a safety system created from material other than steel extended beyond Jusand’s contribution to the art at [186] of the decision.

Legislative context  

Sections 40(2)(a) and 40(3) of the Australian Patents Act requires an enabling disclosure:

• in the complete specification that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (the sufficiency requirement); and
• in the body of the specification that supports each of the claims (the support requirement).

The current language echos European Patent Convention (EPC) language and was introduced as part of the Raising the Bar amendments that took effect 13 April 2013. Surprisingly, the interpretation of this langauge has not been considered by an authoriative court since, until  

Patent in question 

Australian Innovation Patent 2019100556 (the ‘556 Patent), entitled ‘Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore’ was the patent in question. Jusand Nominees Pty Ltd is the patentee. Jusand commenced proceedings against Rattlejack Innovations Pty Ltd alleging that Rattlejack’s “Safety Spear” product infringed the ‘556 Patent. Rattlejack contended that the ‘556 Patent was invalid on the grounds of sufficiency and support and sought revocation. 

Jusand patent

Rattlejack’s product was made of plastic, while the Jusand patent only disclosed the possibility of steel. Overall, the Rattlejack also took a quite different design approach, besides being made of plastic, but on first appearance was within the scope of the Jusland claims.

Since the Raising the Bar amendments to the Australian Patents Act 1990 came into effect in 2013, a valid patent must meet, inter alia, the requirements of sufficiency and support. The decision aligns the Australian law on support to UK and European norms on sufficiency.

The decision may be unsurprising for many as the primary intention for the Raising the Bar amendments was to harmonise with patent practices of UK and Europe. Nevertheless, this interpretation being adopted in mechanical technology underscores an imperative to restrict the patent claims to the material for which there is clearly sufficient disclosure.

Drafting implications 

The lesson will probably be no more than a reminder to always exercise care in framing the claimed invention in terms of how it is disclosed. The description should always be prepared with due caution around alternative embodiments that deliver the same inventive benefits. That includes providing support for a variety of claim amendments that may be desirable in future.

Would the result have been different if the Jusand patent discussed alternative materials such as plastic, and made (for example) reasoned and well founded commentary about design changes necessary to deliver the product in plastic, given the differing properties of steel compared with plastic. Possibly. We can only speculate. Some of the outcome of this decision may have been motivated by a desire to see Rattlejack escape infringement given that Rattlejack did also make a contribution to the art beyond Jusand, even if that is not how the infringement assessment operates.

Future implications 

Many saw this case as taking an overly restrictive view of sufficiency. And perhaps it does. However, as this case has taken almost a decade to surface, we are unlikely to see whether the Jusand view of sufficiency is followed or refined. The Court could just as easily have taken the view that it was common general knowledge that the product could be made in plastic verssu steel, and a person skilled in the art would readily have their disposal the necessary design changes to enable the product in plastic. As of now, we have to assume European-style sufficiency applies.