INSIGHT

The Federal Court's first look at enablement and support

By Miriam Stiel
Consumer law Industrials Intellectual Property Litigation Mergers & Acquisitions Patents & Trade Marks

In brief

The Federal Court has taken a first look at the enablement and support provisions of section 40 of the Patents Act 1990 (Cth) (the Act) as amended by the 'Raising the Bar' Act 2012 (Cth) (RTB). Senior Associate Tony Shaw reports on the case.

Background

In Encompass Corporation Pty Ltd v InfoTrack Pty Ltd [2018] FCA 421, InfoTrack admitted its REVEAL data information display technology infringed two Encompass patents, but asserted that both patents were invalid. While InfoTrack was ultimately successful, one interesting aspect of the case was the court's approach to the enablement and support provisions of s40 of the Act.

Section 40 sets out, among other things, that an invention must be described in the patent specification in a manner that provides a 'clear enough and complete enough' disclosure of the claimed invention. The specification must also provide 'support' for the claimed invention.

Enablement

In arguing that the claims of the Encompass patents were not enabled (ie the disclosure did not enable a person skilled in the art to perform the invention claimed), InfoTrack correctly noted that the invention claimed by Encompass only involved a method for querying remote data sources. Yet, the specification was silent in relation to whether the data sources were remote or local – ie the claimed invention was not the same as the invention disclosed in the specification. InfoTrack relied on that difference to argue that the claims were not enabled and should be revoked.

Encompass said that the difference between the claims and the specification did not matter, and all that was needed was that the specification should allow a skilled person to perform the invention. InfoTrack argued that the description should also 'make plain' the nature of the invention. Relevantly, before RTB a patent had to describe the invention 'fully' (ie make the invention plain).

By arguing as it did, InfoTrack advanced the proposition that pre-RTB provisions and case law were imported into the current s40. In rejecting this proposition Justice Perram looked to the plain English meaning of s40, as well as the Explanatory Memorandum to the RTB. It is clear that the court's position is that the relevant part of s40 only requires the description of the patent to be complete enough to allow a person skilled in the art to perform the invention, and there is not a further requirement to 'make plain' the nature of the invention.

Support

The old requirement for claims to be 'fairly based' on the specification was removed from the Act by RTB and replaced with a requirement that the claims be 'supported' by the specification. InfoTrack had to contend with the fact that, although the specification was indifferent or 'agnostic' as to whether data sources were local or remote, it still clearly 'supported' the narrower claims that specified the data source had to be remote. To address this, InfoTrack argued that RTB's effect was to 'strengthen' the 'fair basis' requirements.

Again, looking at the wording of the current s40 as well the Explanatory Memorandum, Justice Perram rejected this argument on the basis that the wording of s40 was plain and the Explanatory Memorandum sets out that the support requirement is to replace the High Court's approach in Lockwood Security Products Pty Limited v Doric Products Pty Limited [2004] HCA 58. The former law in relation to fair basis has no 'continuing vitality with respect to the new provision'.

Where to from here?

While Justice Perram relied on the Explanatory Memorandum, which favours a UK/European approach to assessing enablement and support, there appears to be some merit in the observation that the Federal Court's approach may actually have 'lowered the bar' for s40.