Documents incorporated by reference do not provide basis to support a priority claim in Australia Australia June 11 2014

A recent Patent Opposition Decision handed down by the Australian Patent Office clarifies the requirements of incorporating references into priority documents in lieu of disclosure.

The Case

In Christopher John Carter v Cristal Metals Inc. [2014], Cristal Metals Inc. (“the Applicant”) had obtained acceptance of Australian Patent Application No. 2006302273 (“the Application”) for an invention relating to a titanium metal powder having submicron titanium boride substantially uniformly dispersed within it. The claimed invention used the Armstrong process, although this was not specifically described in the Specification.

Claim 1 of the Specification was directed to the titanium metal powder of the invention and was defined in terms of the process steps used to produce it. However, in lieu of an explicit description of the Armstrong process, the Specification incorporated by reference three United Stated patents that disclosed the Armstrong process.

Christopher John Carter (“the Opponent”) opposed the Application in the basis that the Claims were not fairly based. Other Grounds of Opposition included lack of novelty; lack of an inventive step; lack of clarity; and that the invention was not a manner of manufacture.

The Opposition was considered in terms of the applicable law in force before 15 April 2013 i.e., the Grounds of Opposition were considered according to the provisions of the Patents Act 1990 before amendment by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012.

Lack of entitlement to priority date claimed

Of interest in this case was the challenge by the Opponent to the Applicant’s claim to a priority date of 6 October 2005, which was the date of filing of the priority document, United States Patent Application No. 60/724,166. It was argued that there was no real and reasonably clear disclosure in the priority document of the process steps of the Claims of the Application.

Under Australian Patent Law applicable to the Application, a Claim of a Convention Application, if fairly based on matter disclosed in a related basic application, would take the priority date that the Claim would have had if it had been included in the basic application. Furthermore, under the previous legislative regime, the Claims of a Specification had to be fairly based on the matter described in the Specification. This requirement has been interpreted by Australian Courts as requiring that there be “a real and reasonably clear disclosure” of what is claimed.

In this case, the Hearing Officer considered that the Armstrong process was not described in the priority document. It was held that, for priority purposes, matter relating to the process to produce the alleged invention should actually be present in the priority document itself. The reliance on the citation of three United States Patents by way of disclosure of the Armstrong process was not considered to be a disclosure, as required by Section 40(3) of the Patents Act 1990.

The Claims of the Application were therefore considered to lack entitlement to their claimed priority date. The Hearing Officer also regarded several Claims of the Application to lack novelty and an inventive step.

Take Home Message

It is worth bearing in mind that the approach of incorporating the disclosure of external documents by reference to a Provisional Patent Application may not always be considered to meet the fair basis patentability requirement of a related Australian Application that was filed under the previous Patent Act. This is particularly the case where Provisional Patent Applications have been filed in jurisdictions other than Australia.

Furthermore, recent legislative changes to the Patents Act 1990 by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, now require a Provisional Specification to disclose the invention in a manner which is “clear enough and complete enough for the invention to be performed by a person skilled in the relevant art,” in order for a Claim to appropriately claim priority from that Provisional Patent Application.

Applicants intending to file Convention and PCT National Phase Applications in Australia would be well advised to include a direct description of any relevant material in the Specification of a Provisional Patent Application filed in another country as basis for subsequent Claims, rather than rely on the incorporation of documents by reference.
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