11 April 2007

DELEGATE EXPLAINS SUBJECT MATTER AND CLARITY REQUIREMENTS FOR PATENTS

Patent Application No. 749848 in the name of Lynx Engineering Consultants Pty Ltd and opposition under section 59 by Bradken Resources Pty Limited

Claim 1 of the patent application filed by Lynx Engineering read:

A container for transporting bulk material including two side walls, two end walls and a base, wherein at least one said side wall includes at least one internal ridge (my emphasis) running along said at least one side wall between said end walls, and wherein said ridge is integrally formed within (my emphasis) said at least one side wall and the distance from which said ridge projects from said side wall is greater than the thickness of said side wall.

Grant of the patent was opposed by Bradken on a number of grounds.

Bradken's Assertions (amongst others)

Bradken said that the invention was not a "manner of new manufacture within the meaning of section 6 of the Statute of Monopolies" See
my article on software and business methods for the necessary background. Bradken said that the invention merely resided in the new use of an old product. If it did, it would not be "a manner of new (my emphasis) manufacture ..."

Bradken also said that the patent specification did not comply with section 40(3) because a number of the terms used in the claims couldn't be given a clear meaning.

NEW USE OF OLD PRODUCT

Threshold Requirement of Newness

The Delegate cited a landmark case. The majority view of the High Court in N V Philips Gloeilampenfabrieken v Mirabella International Pty Ltd 32 IPR 449 was that section 18(1)(a) requires a general threshold requirement of “newness” or “inventiveness”. Merely a new use of an old product would not overcome that threshold.

Citing Bristol-Myers Squibb Co v F H Faulding & Co Ltd 46 IPR 553, the Delegate said that if the invention was obvious or did not involve an inventive step on the face of the specification then the threshold would not be crossed.

Going beyond the specification would be applying the test for inventive step under section 18(1)(b)(ii), which was not the question being considered. As explained by the Delegate with reference to Dyno Nobel Asia Pacific Ltd v Orica Australia Pty Ltd 47 IPR 257 at 300, one will not trespass upon the proper operation of section 18(1)(b)(ii) if focus is kept on the meaning of the specification.

To sum up: The invention will fail to qualify as proper subject matter if the invention as claimed is obvious in view of the patent specification itself, without reference to any material outside of the patent specification.

The Integrally Formed Internal Ridge

The integrally formed internal ridge was key to the invention. According to the specification, it resulted in a container that was lighter than conventional containers while maintaining the strength of conventional containers.

The Delegate could find no suggestion in the specification itself that the invention was merely taking advantage of the state of knowledge such that there was a new use of an old product.
Thus, he held that the invention was a "manner of manufacture" for the purposes of
section 18(1)(a).

CLARITY

It is necessary to consider the principles of claim construction to resolve questions of clarity.
In
Kimberley-Clark Australia Pty Ltd v Arico Trading International Pty Ltd 177 ALR 460 at 466 the High Court said that terms in the claim which are unclear may be defined or clarified by reference to the body of the specification.

In Populin v HB Nominees Pty Ltd 41 ALR 471 at 476-477, the court said that the specification should be understood by adopting a common sense approach to what the words used would have meant in context of the published knowledge existing at the time of filing the patent application.

"Integrally formed within"

The meaning of "integrally formed within" was at the heart of the dispute. The parties developed some intricate arguments about the meaning of these words.

The Delegate said that the claim was not bad just because there was disagreement between the experts on the meaning of the words used in the claim.

Also, citing Finkelstein J in Root Quality Pty Ltd v Root Control Technologies Pty Ltd 49 IPR 225 at 237, he said that there will be cases where expert evidence is not admissible on the question of interpretation or construction. Such a case would be where the relevant terms are in a language with which all lawyers are familiar. In such a case, the court can determine the construction for itself.

There was nothing in the expert evidence to suggest that "integral" had some special meaning or was used in a way that would give it a special meaning.

Citing the Macquarie Dictionary (Australia's standard) the Delegate said that the term "integral" refers to something "made up of parts which together constitute a whole". Thus, in one view, the ridge constitutes an intrinsic portion or element of the side wall. However, it also includes the possibility that the ridge is formed separately from, and subsequently attached to the side wall.

Because there were two possible meanings, the Delegate resorted to the body of the specification for clarification. In the specification the internal ridge was said to act as an "in-built longitudinal structural stiffener". The Delegate said that this strongly implied that the internal ridge was not something that was added to the container side wall as with conventional stiffeners, but formed an intrinsic part of the side wall.

Accordingly, the Delegate found that there was no lack of clarity in the claims.

Barry Eagar - 9 April 2007

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