High Court Latest: Fair Basing of Patent Claims
In allowing Lockwood’s appeal, Gleeson CJ, McHugh, Gummow, Hayne and Heydon JJ stressed that tests relating to other areas of patent law (e.g. obviousness, inventive step, novelty), should not be introduced into the question of fair basing, since fair basing was not about the ‘inventive merit’ of the patent. In the relevant section of the Patents Act (s 40(3))
the language points to a comparison between the claims and what is described in the specification only, and … it does not call for any inquiry into an "inventive step", or inventive "merit" or a "technical contribution to the art".
The Court approved Fullagar J’s judgment in Société des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5:
Section 40(3) requires, in Fullagar J's words, "a real and reasonably clear disclosure." But those words, when used in connection with s 40(3), do not limit disclosures to preferred embodiments.
"The circumstance that something is a requirement for the best method of performing an invention does not make it necessarily a requirement for all claims; likewise, the circumstance that material is part of the description of the invention does not mean that it must be included as an integer of each claim. Rather, the question is whether there is a real and reasonably clear disclosure in the body of the specification of what is then claimed, so that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification."
Fullagar J's phrase serves the function of compelling attention to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks.
The appeal was allowed, subject to certain undertakings.