Australian Patent Office Decides First Opposition Under Raising The Bar Act

By Nigel Lokan

In the matter of CSR Building Products Limited v. United States Gypsum Company¹ the Australian Patent Office has heard and decided the first patent opposition in which the provisions of the IP Laws Amendment Act 2012 (Raising the Bar Act) apply.

The Raising the Bar Act introduced a number of changes to the Australian patent legislation with the intent of raising the standard required to support the grant of a patent and to bring Australia’s patent laws into line with those of its major trading partners. The Raising the Bar Act applies to all patent applications for which a request for examination was filed on or after 15 April 2013.

Amongst a raft of other changes the Raising the Bar Act replaced the requirement that the claims be “fairly based” on the description with a requirement that the claims be “supported by” the description (Support Requirement). In addition, the requirement that the invention be fully described has been replaced with a requirement that the description “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” (Complete Description Requirement).

Drawing on case law from the UK and the European Patent Office, the Hearing Officer noted that the Support Requirement calls for consideration as to whether the claim scope corresponds to the applicant’s technical contribution to the art, and that the Complete Description Requirement necessitates that a skilled person can readily perform the invention over the whole area claimed without undue burden or inventive skill.

After applying these considerations to the facts of the case the Hearing Officer found that the description and claims failed to comply with both requirements. Interestingly, the description and claims would likely have met the fair basis and full description requirements that existed prior to commencement of the Raising the Bar Act.

Whilst being otherwise unremarkable the decision in this case suggests that consistent with the intent of the Raising the Bar Act, the bar has been raised! The case also provides useful guidance in relation to how the Patent Office is likely to interpret and apply the Support Requirement and the Complete Description Requirement.

¹CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (http://www.austlii.edu.au/au/cases/cth/APO/2015/72.html)