BP International Limited v Neste Oil Oyj [2013] APO 46

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In August this year, Australian patent application 2003258753 (“the application”) directed to diesel fuel compositions was successfully opposed on the ground that the application did not disclose the best method of performing the invention known to the applicant.

Introduction

The best method requirement is set out under s.40(2)(a) of the Patents Act 1990:

A complete specification must:
(a) describe the invention fully, including the best method known to the applicant of performing the invention…’

In order to succeed on this ground, the opponent must show that at the time of filing the application, the applicant knew of a better way to perform the invention than that which is described in the specification. It is rare for an opposition to be successful on this ground as it often requires the opponent to provide information that they are not privy to. It is even more rare for an opposition to succeed for the sole reason that the best method of performing the invention has not been disclosed.

Failure to disclose the best method

The invention relates to a fuel composition containing, amongst other components, oils or fats from plants, animals or fish. During prosecution, the claims of the invention were restricted to animal fats only. New examples were also inserted into the specification to provide support for the amended claims as the examples provided in the originally filed specification only referred to oil originating from plant material.

The amended claims were held to be fairly based on the specification as filed and the claims were also found to be sufficient in that a person skilled in the art would be able to make compositions consistent with the claims.

The new examples, however, did not specify the origin of the animal fats. By omitting this information, the Hearing Officer considered that the best method of performing the invention was not fully disclosed and that the patent application therefore failed to meet the requirements of s.40(2)(a) of the Patents Act 1990.

The Applicant was given two months to amend the application to overcome this deficiency.

When must the best method be disclosed?

This decision applied the law as it stands prior to the amendments made under the “Raising the Bar” amendments which took effect on 15 April 2013. However, the decision does highlight that the law as amended may impact on the approach taken in relation to the best method requirement in the future.

Patents Act preceding the “Raising the Bar” Amendments:

The disclosure of the best method is generally provided at the date of filing. However, it was clarified in Eli Lilly v Pfizer Overseas Pharmaceuticals that the best method can be disclosed up until the date of patent grant.1

If the best method is not disclosed at the date of filing, any amendments made to the specification to later disclose the best method must be made in accordance with the Patents Act requirements for amending the specification, including that the amendment must not claim matter that is not in substance disclosed in the specification as filed.2  However, this means that examples incorporating the best method can be included in the specification at any time up until grant.

Patents Act including the “Raising the Bar” Amendments:

Patent applications for which examination has been requested after 15 April 2013 are considered under the legislation as amended. The new law provides that material added to the specification must not claim or disclose matter that extends beyond that disclosed in the originally filed documents.3

Amendments such as the addition of new examples into the specification are unlikely to be allowed as this would be considered as adding new subject matter. Consequently, in most cases the requirement to disclose the best method will need to be fulfilled at the date of filing.

Due to these stricter requirements, we suspect that invalidity as a result of the best method not being disclosed is likely to become a ground of attack more frequently encountered.

Conclusion

The best method known to the applicant at the time of filing the application must be fully disclosed including features that would allow the person skilled in the art to perform the best method. For applications filed and examination requested prior to 15 April 2013, the best method must be disclosed before the patent is granted. For such pending applications, we recommend reviewing and amending the application if necessary to ensure the best method known to the applicant at the time of filing is fully disclosed in the specification, before the patent proceeds to grant. For new applications, It will be more difficult to make these amendments as they will be considered to be added subject matter.

1 Eli Lilly v Pfizer Overseas Pharmaceuticals [2005] FCAFC 224 at [366], [370] and [375].
2 s.102(1) Patents Act 1990 (prior to Raising the Bar amendments).
3 s.102(1) Patents Act 1990 (incorporating Raising the Bar amendments).