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The High Court judgment in ResMed Pty Ltd v Commissioner of Patents1 demonstrates that the ‘internal’ fair basis requirement in s 10(4) of the Patents Act 1953 has some teeth.
The Court found that for the feature to be fairly based, each feature of the claimed invention must be “in substance disclosed in the complete specification”2, and that this test had not been met in this case as the “connector” feature in the claims was not fairly based as it was broader than the disclosed “elbow” feature.
This finding is significant because it:
- confirms that the ‘internal’ fair basis requirement in s 10(4) is more demanding than the ‘external’ fair basis requirement in s 11, and
- demonstrates that IPONZ (the Intellectual Property of New Zealand) and the Courts will scrutinise attempts to claim generalisations from the disclosure in the complete specification.
Background
The Patents Act 1953 states in s 10(4) that claims “must be fairly based on the matter disclosed in the specification”.
Consistent with English authorities, early New Zealand Patent Office decisions held that s 10(4) imposed significant restraints on how broadly claims could be drafted. Not only must the claims “not be more extensive than the … new contribution of technique to public knowledge provided by the inventor as a consideration for his limited term of monopoly”3, but there needed to be a “clear, positive disclosure as a basis for a claim.”4
However, in the late 1990s, IPONZ began softening its stance on what ‘internal’ fair basis required. That softening was as a result of:
- improperly conflating the different requirements of ‘internal’ fair basis and ‘external’ fair basis,5 and
- accordingly, applying the Mond Nickel test for assessing ‘external’ fair basis to the issue of ‘internal fair basis’.
This change appears to have led patentees to draft broad claims often supported by no more than a limited statement in a paragraph or consistory statement. And IPONZ appears to have begun accepting that these isolated references were sufficient for the claims to be fairly based under s 10(4).
The patent in issue and IPONZ’s response
The claims at issue in the High Court were broadly drafted.
The claims were directed to a patient interface for providing respiratory therapy. Each claim recited a “connector” instead of an “elbow” that joined the mask to the air delivery tube. However, the specification had essentially exclusively disclosed an “elbow”, with “elbow” referred to 379 times and “connector” used only once. That single instance was in [00248], where the specification stated that “the elbow may be referred to as an adaptor, connector or may be described as any element attach [sic] an air delivery tube to a patient interface”.
It was this single paragraph that ResMed relied on to argue that a claim to the generic “connector” was fairly based.
The highly experienced examiner disagreed, determining that [000248] did not say other components could be used. Rather, the paragraph confirmed that while the elbow might have these functional descriptions, it was still an elbow.
The examiner also noted that the specification disclosed that there were advantages to having an elbow as opposed to other forms of connectors, namely that the “multi-axis elbow assembly allowed movement of a connected tube in two separate planes while substantially isolating drag forces from the tube.”6
As a result, the examiner found the claims were not fairly based.
Assistant Commissioner Coles upheld the examiner’s decision, determining that the claims went beyond the disclosure in the complete specification as they were not in substance disclosed.7
High Court’s decision
ResMed appealed to the High Court, arguing that requiring the feature to be “in substance disclosed” was an error of law as, under the test in Mond Nickel, all that had to be shown was that the feature was “broadly described”.
The High Court disagreed and upheld the Assistant Commissioner’s decision that the claims lacked fair basis by:
- Determining that “the proper test for fair basis is whether the feature claimed is in substance disclosed in the complete specification as a whole”8
- Citing the English Court of Appeal’s decision of C Van der Lely NV v Ruston’s Engineering Co Ltd which sets out an exacting test for assessing internal fair basis.9
- Holding that, while the Mond Nickel test provides a “guiding framework”, the second question, which asks whether there is an inconsistency between the claimed invention and the specification, captures claims that cover all forms of a component but the disclosure was only of one form.10 The Court also noted that these guidelines were merely a framework, with the ultimate question being “whether the claims go beyond the disclosure in the complete specification”11
- Noting that the “broadening of language” from “elbow” to “connector” conflicted with the basic requirement that claims cannot extend beyond the disclosures in the specification.12 The Court added that, if such broadening were allowed, it would “give rise to questions of fairness to competitors”, particularly when it came to divisional applications and daisy-chaining.13
- Observing that, for the “connector” feature to be fairly based on the complete specification, there needed to be explicit disclosure that “any connector could be used as the conduit between mask and air delivery tube, rather than specifically refer to an elbow”14, and
- Holding that, as the specification always disclosed an elbow and did not give any example where the conduit was anything other than an elbow, then an elbow was an essential feature of the technology.15 As a result, omitting this essential feature meant that the claims were not fairly based.16
Chapman Tripp Patents comment
The High Court’s decision is a welcome return towards orthodoxy and a recognition that the ‘internal’ fair basis requirement under the Patents Act 1953 requires clear, positive disclosure of the claimed invention. This moves New Zealand back towards the approach in England and earlier New Zealand Patent Office decisions. But it signals a departure from the Australian approach to internal fair basis pre-Raising the Bar.17
Practically speaking, the decision is a reminder that patent attorneys must be careful when claiming a wider monopoly beyond what is disclosed. when it comes to divisionals under the Patents Act 1953. In particular, when seeking to recite components generally, patent attorneys should consider whether the complete specification expressly discloses the components generally. If the complete specification only discloses a form of component, then the claims should be limited to that form.
[1] ResMed Pty Ltd v Commissioner of Patents [2024] NZHC 1881.
[2] At [98].
[3] Re Upjohn Co’s Application PO P04/1967, 7 November 1967. This decision was cited by the High Court at fn 59. See also Biogen, Inc v Medeva, Inc [1997] RPC 1 (HL) at 54. Re Wellcome Foundation Ltd’s Application PO P01/1977, 6 April
1977; Beecham Group Ltd v Bristol-Myers Co PO P04/1978, 17 May 1978.
[4] Re Rank Xerox Ltd’s Application PO P02/1972, 20 November 1972.
[5] Commonwealth Scientific & Research Organisation v Ministry of Agriculture and Fisheries PO P03/1993, 9 March 1993. But the leading English texts all confirmed that the two were different as they are directed to separate enquiries. See Terrell on the Law of Patents (12th ed) at [170]; CIPA Patent Law of the United Kingdom (1975) at 33, 35.
[6] At [00029]. See also at [000244], [000422].
[7] ResMed Pty Ltd [2024] NZIPOPAT 2, recorded at [43] of the High Court’s judgment.
[8] At [98].
[9] C Van der Lely NV v Ruston’s Engineering Co Ltd [1985] RPC 461 (EWCA).
[10] At [85(b)]. See also [60]-[62].
[11] At [39].
[12] At [87].
[13] At [87].
[14] At [92].
[15] At [95]-[97].
[16] At [100].
[17] That position in Australia has been criticised as being “amusing” and demonstrating the “independence of Australian from United Kingdom patent law”: Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12 at [56]. See also D Brennan “Does a requirement that the description fully supports a product claim raise Australia from ‘mechanistic and impoverished’ patent rules” (2012) 38(1) Monash University Law Review 78; D Catterns “Lockwood v Doric: fair basis and the High Court” (2006) 65 Intellectual Property Forum 34.
