The Intellectual Property (Productivity Commission Response part 2 and other Measures) Bill 2019 (the Bill) received Royal assent on 26 February 2020, resulting in the introduction of amendments to The Patents Act 1990 (Cth), (the Act), to include cross references to Section 40(3A) with the effect that Section 40(3A) is now available as a ground for refusal of amendments after acceptance or grant, and as a ground for invalidity during re-examination, opposition or revocation proceedings.
Section 40(3A) of the Act states that (emphasis added): “The claim or claims must not rely on references to descriptions, drawings, graphics or photographs unless absolutely necessary to define the invention.”
The intent of Section 40(3A), as originally introduced by the Raising the Bar Act 2012 (Raising the Bar Act), was to abolish “omnibus” claims, which are a form of claim that refer to other parts of the patent specification to define the monopoly. However, despite this intention, in a rare moment of candour the Explanatory Memorandum to the Bill stated at [262] that: “… due to drafting oversight the Raising the Bar Act only allowed this requirement to be considered and reported on during examination of standard and innovation patent applications.”
Whilst it is clearly desirable to align the grounds for assessing the validity of a patent before grant with those available afterwards, ironically, it appears that in addressing the drafting oversight, these new measures have potential consequences that run counter to the objective of increasing certainty in the validity of granted patents.
Firstly, we find it almost impossible to imagine a circumstance where cross-references to extrinsic information are absolutely necessary to define the invention. This could lead to the undesirable drafting of claims incorporating enormous passages of the description, large diagrams, or charts, resulting in claims that are many pages in length.
Fortunately, Examination practice at IP Australia3 indicates that the Office considers references to spectra for chemical compositions, drawings for apparatus and Sequence ID numbers for nucleotide and protein sequences to be allowable for the time being. Furthermore, in accordance with established case law, the Office allows the use of reference numerals in a claim that refer to features in a drawing, graphic or photograph, provided these are used merely to illustrate features that are otherwise defined generically. Even where a claim recites “as herein defined”, and the reference is to a clearly and specifically defined term in the specification, the Office follows well-established jurisprudence and invokes the Dictionary Principle, regarding such claims as allowable.
Nevertheless, Section 40(3A) plainly states that the claims “must not rely on references to descriptions, drawings, graphics or photographs”, leading to considerable concern that it might be interpreted judicially as prohibiting any claim containing a drawing, graphic or photograph in the context of opposition and revocation proceedings for which this ground is now available. Such an undesirable result would require substantial practice changes and produce considerable uncertainty as to the strength of many existing patent rights.
For example, as it is possible to define chemical compounds using systematic names, it could be argued that referring to a chemical structure within a claim is not absolutely necessary to define the invention. If such an argument were judicially upheld, it would be necessary to draft claims containing long lists of systematic names, counter to the need for clarity, succinctness and the ability to easily comprehend the scope of the monopoly claimed.
Secondly, the new grounds for refusal of post-acceptance amendments, and for invalidity during re-examination, opposition or revocation were given immediate retrospective effect upon any patent or patent application with an examination request date or filing date on or after 15 April 2013, and to any innovation patent granted or certified, or any innovation patent application filed on or after 15 April 2013, on the basis that they should apply to “patents and patent applications that were always required to comply with subsection 40(3A) of the Patents Act”.9 Thus, in the period intervening between 15 April 2013 and 26 February 2020 there will have ensued a large number of IP rights now subject to grounds for invalidity that were not previously available after the date they were accepted, granted or certified. In pursuing “the objective of increasing certainty in the validity of granted patents” our lawmakers have introduced a considerable degree of uncertainty not only in the validity of IP rights, including granted ones, to which the new provisions apply retrospectively, but also in the interpretation of the rather poorly drafted Section 40(3A) itself.
These changes were no doubt made with the best of intentions. However, we intend to monitor the development of their judicial interpretation closely, while refraining from saying anything about the road to Hell.