15 October 2005

Steriliser Claims Lack Fair Basis and Novelty

The Case
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On 26 September 2005, the Deputy Commissioner of Patents handed down his decision in an opposition proceeding against Sheiman Ultrasonic Research Foundation Pty Limited by Novapharm Research (Australia) Pty Ltd. .
The Patent Application
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Sheiman filed an international patent application on 17 February 1999, claiming priority from an Australian provisional patent application. Acceptance of the application in Australia was advertised on 31 October 2002. The matter came to a hearing on 29 August 2005. Sadly, this is an indication of the sort of time periods litigants, even in lower courts, can expect. .
The claims of the patent application included two independent claims. These were:
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1. A sterilisation apparatus comprising:
an aerosol generator being adapted to generate an aerosol of a sterilising agent; and

a sterilisation chamber operatively coupled to the aerosol generator so as to receive a recirculatory flow of the aerosol, the aerosol generator being adapted to produce said recirculatory flow and the sterilisation chamber being designed to receive an article requiring sterilisation whereby in operation the recirculatory flow of the aerosol through the sterilisation chamber is effective in sterilising the article.

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12. A method of sterilisation comprising the steps of:
providing a sterilisation apparatus including an aerosol generator and a sterilisation chamber operatively coupled to each other;
locating an article requiring sterilisation in the sterilisation chamber; and

providing a recirculatory flow of an aerosol of a sterilising agent through the sterilisation chamber said recirculatory flow being produced by the aerosol generator whereby in operation the recirculatory flow of the aerosol through the sterilisation chamber is effective in sterilising the article.

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The Issues
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Novapharm held that the claims were not fairly based on the specification and that they lacked novelty in the light of US patents. Novapharm also held that the claims lacked novelty based on Novapharm's complete application claiming priority from Novapharm's provisional patent application. Novapharm's provisional was filed after Sheiman's provisional, but before Sheiman's international application.
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Fair Basis
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On this issue, it became apparent that the opposition stood or fell on the basis of the interpretation of the italicised phrases highlighted in the above claims. Novapharm argued that the phrases did not give any indication as to how the aerosol generator produced the recirculatory flow. The Deputy Commissioner agreed that the phrase in claim 1 does not set out any constructional details of the aerosol generator. The Deputy held therefore that in the absence of constructional details, the aerosol generator can be taken to be a "black box" having the functional ability of producing an aerosol.
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As described in the specification, the invention entails the use of an aerosol generator that does not require a fan or other such device to generate flow of the aerosol. Rather, the flow is generated by certain properties of the nebuliser used. The failure to adequately limit the claimed invention necessarily rendered claim 1 not fairly based.
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Novelty
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For the purposes of this discussion, it is not significant that the Deputy found that claim 1 lacked novelty in the light of the US patents. However, the reasons for the Deputy finding that claim 12 and not claim 1 lacked novelty in the light of Novapharm's applications are interesting.
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Sheiman's provisional made exclusive reference to the use of the device with a "detergent". On the other hand, Sheiman's complete specification makes reference to a "sterilising agent". The Deputy held that "a fair reading" of the provisional specification leads to the conclusion that the invention achieves sterilisation through the use of aerosol detergent. The Deputy was satisfied therefore that the provisional is limited to the use of detergents and that there was no real and reasonably clear disclosure of the use of sterilising agents as such.
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However, the Deputy held that this did not deprive claim 1 of the priority date of the provisional because Novapharm did not point out any differences in functional requirements arising as between detergents and sterilising agents. On the other hand, the Deputy pointed out that method claim 12 expressly includes the step of providing a flow of a sterilising agent as an essential feature. Accordingly, the Deputy held that claim 12 was only entitled to the priority date of the international application and not the provisional application. As such, claim 12 was held to lack novelty as being anticipated by Novapharm's provisional patent application.
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Conclusion
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It is important for practitioners to be careful of being over-zealous when staking out the monopoly in a claim. If the claim is excessively broad, rights can be diluted or lost due to a weakening of the necessary fair basis link between the claims and the specification.
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This matter also emphasises the need for provisional specifications to be drafted professionally and completely. A diligent attempt must be made to describe all possible embodiments and, where necessary, use appropriate generic structural language.

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