Australia’s best method requirement bares its teeth again!
Published on 04 Sep, 2017
Last year we reported on a Full Court of the Federal Court decision that confirmed the importance of disclosing, in a patent specification, the best method of performing an invention as required under the Australian Patents Act 1990.
In Kineta, Inc.  APO 45 (31 August 2017), the Patent Office has followed the Full Court’s decision and rejected an application for failure to disclose the best method of performing the invention. Given the facts of the case, a single sentence included in the specification would have satisfied the best method requirement. Accordingly, it is crucial that attorneys, when drafting specifications intended for prosecution in Australia, understand Australia’s best method requirements.
Patent application 2012315953, filed by Kineta, Inc. disclosed compounds and methods useful for treating viral infection in vertebrates, including RNA viral infections. The Examples described the anti-viral and pharmacological properties of the disclosed compounds. Importantly, however, the Examples did not include any information regarding how any of the compounds could be prepared or obtained.
During prosecution, the Examiner noted that the examples in specification demonstrated that the applicant possessed the compounds of invention and tested them for activity. Accordingly, the Examiner concluded that the applicant must have either synthesised the compounds, or otherwise obtained them, but did not state at least one method of doing so, which is a requirement for disclosing the best method under sec 40(2)(aa). For this reason, the Examiner rejected the application.
Issues and findings
The Deputy Commissioner of Patents considered three issues in determining this case.
- what is the invention for which a best method must be provided
- what method is described in the specification; and
- was the applicant aware of a better method?
In relation to point 1, the Deputy Commissioner determined that the nature of the invention resided in both the identification of new compounds and their use. The Deputy Commissioner also concluded, in relation to point 2 above, that a person skilled in the art would not have appreciated how to prepare any of the compounds from a reading of the specification in the light of the common general knowledge.
In their evidence the Applicant said that nothing was withheld from the specification because the method of preparing the compounds was contracted to a third party, Life Chemicals Inc. and the applicant was not informed how the compounds were prepared. Ultimately, however, the Deputy Commissioner of Patents found that the applicant knew the compounds could be purchased from the contractor and that this information was not, but should have been, included in the specification. For this reason, it was found that the applicant did not provide the best method of performing the invention.
Notably, in reaching his decision, the Deputy Commissioner of Patents also found that the specification did not comply with section 40(2)(a), in that it did not disclose the invention in a manner which is clear enough and complete enough for it to be performed by a person skilled in the relevant art.
This second finding means that the applicant is likely to face difficulties if they attempt to amend the specification to overcome the lack of best method rejection. In this regard, under a previous incarnation of the Patents Act, it was possible to amend a patent specification up until at least the date of grant to include the best method known to the applicant at the date of filing (Pfizer Overseas Pharmaceuticals v Eli Lilly and Co  FCAFC 224). The law, however, that applies to this case means that an amendment of the specification is not allowable if, as a result of the amendment, the specification would claim or disclose matter that extends beyond that disclosed in the complete specification as filed. As the Deputy Commissioner of Patents considers that the specification has not disclosed the invention in a manner which is clear enough and complete enough for it to be performed by a skilled artisan, the addition of the best method in the present application would likely be considered as adding material and therefore not allowable.
The purpose of Australia’s best method requirement is to ensure that the public is able to enjoy the full benefit of an invention when a patent expires and that a patentee does not deliberately withhold information that gives the best results. In this case, the applicant knew that the compounds could be purchased from Life Chemicals Inc but did not disclose this information.
The majority of applications that are filed in Australia originate in jurisdictions, such as Europe and the US, where a best method requirement is not a major consideration. Accordingly, we strongly recommend that foreign patent attorneys discuss the best method requirements with their Australian attorneys with a view, if necessary, to making appropriate amendments to the specification, preferably before filing.