20 February, 2015

Drafting Guidelines in Light of S40(3) Amendments

Drafting Guidelines in Light of S40(3) Amendments

S40 of the Patents Act 1990 (Cth) is related to internal validity of a patent specification and, in essence, provides rules for drafting patent applications.  Until 15 April 2013, s40(3) stated, “[t]he claim or claims must be clear and succinct and fairly based on the matter described in the specification.”  On 15 April 2013, however, the fairly based requirement was replaced by a requirement that stated, “[t]he claim or claims must be clear and succinct and supported by matter disclosed in the specification.

This article briefly examines how the original s40(3) has been interpreted and predicts how the amended s40(3) could be interpreted by Australian courts.  Finally, a few drafting guidelines are presented that meet the requirements of both fair basis and support.


The concept of ‘fair basis’ was introduced in Australian patent law to prevent an inventor from claiming a monopoly more extensive than was necessary to protect that which he himself (in his specification) had said was his invention.1

In the 1950s, basic rules known as the 'Mond Nickel rules' (after Mond Nickel Company Ltd's Application (1956) RPC 189) were devised to determine if a claim lacked fair basis.  Essentially, the Mond Nickel rules stated that a claim may lack fair basis for a number of different reasons, including:

  1. lack of disclosure of a particular claimed feature in the description;
  2. inconsistency between a claim and the corresponding description (e.g., omitting an essential feature of the invention in the claims); or
  3. claiming an overly broad monopoly when compared to the actual invention – as determined from a reading of the description as a whole.

The courts have rarely faced any issues when dealing with cases pertaining to the first two rules, as these rules are quite definitive.  The third rule, however, is not as straightforward, and until 2004 the courts have often passed conflicting decisions regarding this rule.  In 2004, however, the High Court decided to replace the third Mond Nickel rule with a more specific rule.  The following landmark cases illustrate this shift.

1. The decision in Olin v Super Cartridge2 (1977)(1977) planted the seed for the 2004 High Court decision to scrap rule 3. In this case, Gibbs, Stephen and Mason JJ held that claim 10 was not fairly based on the specification., while Barwick J dissented. The claim in contention was directed to a new product; specifically, to a relatively thin walled tubular structure. The specification described only one method of manufacturing this product. Stephen and Mason JJ believed that product claimed in claim 10 should have been restricted to that method of manufacture. They had reached this conclusion based on the third Mond Nickel rule stating that the patentee’s monopoly must be limited by reference to the disclosure and should not extend to a product produced by new and different means not described in the specification.

Barwick J, on the other hand, was of the opinion that the question of whether a claim is fairly based is not to be resolved by considering whether a monopoly in the product would be an undue reward for the disclosure. Rather, the question is a narrower one, namely whether the claim as expressed travels beyond the matter disclosed in the specification.  Upon reviewing the disclosure and the product claim, Barwick J held that the product claims were fairly based on the specification because the product itself was novel and inventive and the specification described the advantages of the physical properties of such a product even though the specification did not describe more ways of making the product.

2. In Ccom Pty Ltd v Jeijing Pty Ltd3 (1994), the court again applied the third Mond Nickel rule and decided that claim 1 of Ccom’s standard patent was not fairly based on a previously filed petty patent. Claim 1 of the standard patent included an element ‘Chinese character stroke-type categories’. The courts construed this term as including n number of multiple categories. However, the petty patent only described eight categories and the court found that the “disclosure (does not) plainly foreshadow any other such classification”. Accordingly, as the claims were broader than the specification of the petty patent, the court found that the claims were not fairly based on the petty patent.

3. In Atlantis Corp Pty Ltd v Peter Schindler4 (1997) Lockhart, Wilcox, Lindgren JJ applied the third Mond Nickel rule in finding the claims of the Atlantis patent to lack fair basis. The claims were directed to “A rigid cell structure” (that was not limited to any application), while the title of the invention was “Drainage Cell” and the specification described the invention as being used for the purpose of drainage. The courts found that the claims were not limited to the specific application described in the specification and therefore were broader than the actual invention.

4. In Lockwood Security v Doric Products5 (2004), the High Court upheld the principles used by Barwick J and found that all the claims of Lockwood’s patent were fairly based on the specification. Claim 1 in Lockwood’s patent was directed to ‘a latch assembly’ that included among other elements ‘a lock release means’. The detailed description defined the lock release means as a means, ‘which responds to operation of the lock so as to automatically deactivate the locking means. The release means may take any suitable form, and one particular form will be hereinafter described’. In arriving at their decision, the Court regarded the fact that the body of the specification contained a definition of the broad release means and that further description of the lock release means was generally prefaced by words such as “preferred”, “may be”, “not to be understood as limiting”, “suitable” and “one particular form”. Based on this reasoning, the court found that the claims did not travel beyond the specification and upheld the principle that a specification need not disclose any more than a single embodiment of an invention and yet still be able to include valid claims which embrace a variety of ways of putting the invention into practice. However, the Court also made it clear that merely having a consistory clause would not be sufficient to establish fair basis if the claim was inconsistent with a proper reading of the specification as a whole.

From these cases, it is apparent that the interpretation of fair basis had progressively changed. It had moved away from the basic principle of fair basis, i.e., considering the monopoly afforded to the patentee for the disclosure, and towards considering whether the specification includes a ‘real and reasonably clear' disclosure of the claimed invention. Moreover, the courts have moved away from any earlier interpretations that involved consideration of inventive step, merit of the invention or technical contributions and have categorically rejected such interpretations6.

Main takeaway - For a broad claim to be fairly based on the specification, a single embodiment of the invention is sufficient as long as the specification discloses that that embodiment is not the only way of accomplishing the invention.


Neither the Patents Act nor the explanatory memorandum7 has defined the term ‘supported by matter disclosed in the specification.” However, the explanatory memorandum does shed some light on the reasons for the change and provides guidance to interpret the new language. Legislators admit that one reason for amending s40(3) was the clash between the interpretation of fair basis by the High Court of Australia (in Lockwood v Doric) and the interpretation of support by the UK House of Lords (in Biogen v Medeva).8   In this, they have clearly implied their dissatisfaction with the approach taken by the Australian High Court and attraction to the approach taken by the House of Lords. Another reason offered by the explanatory memorandum was to reduce the unnecessary complexity and uncertainty faced by applicants in different jurisdictions because of the differences in substantive law in different countries. So, to solve these problems, the language of s40(3) was amended to match that of s14(5)(c) of the Patents Act 1977 (UK). The legislators also advised that overseas case law (especially UK case law) in respect of the ‘support’ requirement would be made available to Australian courts to assist in interpreting the new provision.

Although it is clear that the Parliament would like the Australian courts to adopt the meaning of “supported” utilized by UK, it is unclear whether Australian courts will acquiesce, predominantly because the legislation does not explicitly define ‘support’ and more importantly, because the latest Australian decision is at loggerheads with UK decisions. In case the Australian courts do decide to follow UK’s (and in turn EP’s) interpretation, it becomes necessary to review the latest principles handed down by UK courts in relation to the support requirement.

Biogen Inc v Medeva Plc9 is the infamous UK case that introduced the term ‘Biogen sufficiency’. This case was cited in the explanatory memorandum to highlight the difference between Australian and UK support principles and it has also been reviewed and then thrashed by the Australian High Court in Lockwood v Doric. This notoriety makes Biogen v Medeva the best case to help understand how UK interprets support.

The primary question in Biogen v Medeva was whether the claims of a standard patent were supported by a previously filed patent application (Biogen I) from which priority was claimed. The court unanimously held that the claims were not supported by Biogen I. Claim 1 of Biogen’s patent was drawn to a product and it generalized the teachings of Biogen I in two ways. Firstly, Biogen I had described a particular form of a product. The claim, however, was for any form of the product. Secondly, there was generalisation of the method which was used. In Biogen I, the particular product was made from a particular process. The claim, however, was for any method of making any form of the product.

In reaching their decision, the court first stated that for matter to be capable of supporting an invention it must contain an "enabling disclosure," that is to say, it must disclose the invention in a way which will enable it to be performed by a person skilled in the art. The court then proceeded to restate an established principle - the specification must enable the invention to be performed to the full extent of the monopoly claimed. Thus if a patentee has hit upon a new product which has a beneficial effect but cannot demonstrate that there is a common principle by which that effect will be shared by other products of the same class, he will be entitled to a patent for that product but not for the class, even though some may subsequently turn out to have the same beneficial effect. On the other hand, if he has disclosed a beneficial property which is common to the class, he will be entitled to a patent for all products of that class (assuming them to be new) even though he has not himself made more than one or two of them. Finally, the court noted another general legal principle - the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified.

Based on these principles, the court determined that the technical contribution disclosed in Biogen I did not correspond to the broad monopoly sought by claim 1, and therefore held that the claims lacked support from Biogen I.

It is clear that the principles raised in Biogen v Medeva are at odds with those used by Barwick J in Olin v Super Cartridge, and upheld in Lockwood v Doric. For instance, while it may be sufficient for a specification to disclose a single embodiment of an invention and yet be able to provide ‘fair basis’ for broader claims, such a specification would not be able to provide ‘support’ for broad claims according to Biogen v Medeva.

The key difference between ‘fair basis’ and ‘support’, however, seems to be the role of the balance between technical disclosure and the awarded monopoly. In fair basis this balance has stopped playing a role, while in support is seems to play a major role.

Main takeaway - Broad inventions would not be supported by the specification, based on a single embodiment of the invention. However, a broad claim may be supported by a specification that describes a single embodiment but also describes the general principles of the invention in broad terms.

In the event that Australian courts decide to interpret s40(3) afresh, they would construe the provision based on the ordinary meaning of the provision. The amended section is different from the original section in two major ways – firstly, fairly based on is replaced by supported by and secondly, described in the specification is replaced by disclosed in the specification. Consequently, it becomes important to determine the differences between both these original and amended terms.

  1. Fairly based v supported by: According to the Macquarie Dictionary, ‘fairly’ could mean properly, legitimately, completely, clearly or distinctly. ‘Based’ means that on which anything stands or rests. ‘Support’, on the other hand, could mean to tend to establish (a theory, statement, etc) by providing new facts; substantiate, or to furnish corroborating evidence for.  Based on the plain meanings of these terms, it seems that the fairly based requirement is broader than the support requirement. Where only a clear or distinct basis was required from the specification under the original section, it now seems that the specification would have to give real form to each and every claim element for the claim to the supported by the specification.
  2. Described v disclosed: plainly, ‘describe’ means to give an account of something in speech or writing, or to represent something pictorially. ‘Disclose’, on the other hand, means to make known or to lay open to view. Disclose therefore does not specify how the information is made known, while describe specifies that the information should be written or represented pictorially. In the case of patent specifications, where information can only be made known through writing or drawing, it seems at first glance that described and disclosed are synonymous. However, the Rules of Construction indicate that the patent specification should be considered as a whole. In this respect, “describe” would seem limited to explicit presentation of information, whereas “disclose” permits, under the Rules of Construction, to allow a skilled person some scope in interpreting the specification as a whole. “Disclose” therefore may be broader than “describe”.

Consequently, based on the ordinary meaning of s40(3), it appears that the description of the invention is required to provide more than just a base for the claims. Rather, it would seem that the specification should provide some sort of substantiation or corroboration to each of the claims. However that substantiation need only be disclosed, and not described in the specification.


It is hard to predict whether the Australian courts would backpedal on their position regarding the role of the balance between technical disclosure and awarded monopoly or interpret ‘supported’ in such a way that maintains their stand regarding this issue. It is, however, safe to assume that the Australian courts’ interpretation would be somewhere between their interpretation of ‘fair basis’(best case scenario) and Biogen’s sufficiency (worst-case scenario) given that supported is intended to be a narrower term than fair basis.


Irrespective of the interpretation of ‘support’ followed by Australian courts, we believe that if the following drafting guidelines are followed, a patentee can be prepared for any interpretation.

  1. Include examples of different applications where the invention may be used. If the invention can be used only for a single application or only a single application is described in the specification, that application should be explicitly claimed.
  1. Make sure that the title of the application is not narrower than the preamble of the broadest claim.
  1. To obtain broad protection, describe the invention in broad terms including the advantages of the invention based on broad principles. For instance, in an electronic, mechanical or software invention, begin with a description of the invention in an exemplary environment, platform, or device, followed by a block diagram of the invention in broad terms (which match the broad terms used in the claims). Specific examples/embodiments of the block diagram should follow where examples of the broad claim elements can be narrowly described.
  1. Describe multiple embodiments/examples to demonstrate that the principles of the invention can be applied across the embodiments.
  1. Provide variations and substitute examples for all claim elements. Care should be taken that these variations do not destroy the novelty/inventive step of the invention. For instance, if the novelty of a particular product, such as a pen, lies in a particular feature of the product, such as a snap-fit cap, do not provide examples of substitute caps such as screw-top caps if those types of pens are already known.
  1. Do not restrict a product invention to the method of manufacture known by the inventor, if the product itself is novel and inventive. To support such a claim, the specification should include a description of the product, its properties, and their advantages rather than just a description of the method of making the product.
  1. Double-check any numerical values in the specification and only include such values if they are essential to establish or assist in the novelty/inventiveness of the invention. Also, examples of other possible values should always be provided even though some specific values are described as being ‘preferred’. Comparative examples, showing values that don’t form the invention, should also be provided and described to illustrate how they don’t offer the advantages/results of the invention.
  1. Do not rely on consistory statements to provide support for claim elements. Ensure that each claim element or phrase is explicitly supported in the body of the specification. Special care should be taken when amending claims during prosecution to ensure that the amended language is supported by the detailed description.

1 Blanco White, Patents For Inventions, 5th ed (1983) at §4-801
2 Olin Corporation v Super Cartridge Co Pty Ltd [1977] HCA 23; (1994) 180 CLR 236 (4 May 1977)

3 Ccom Pty Ltd and Ronald Howard Thomas v Jiejing Pty Ltd, Paravet Instruments Pty Ltd, Jeffrey John Yates and Eric Russell Chappell [1994] FCA 1168

4 [1997] FCA 1105 (24 October 1997)

5 [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260 (18 November 2004)

6 Lockwood Security v Doric Products [2004] HCA 58; 217 CLR 274; 212 ALR 1; 79 ALJR 260 (18 November 2004)

7 The Parliament of the Commonwealth of Australia, Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill, 2011

8 Ibid Item 9

9 [1996] UKHL 18 (31 October 1996)

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