Will Raising The Bar Changes Affect “Means-Plus-Function” Language In Australia?

by FPA Patent Attorneys
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The use of means-plus-function language has been a settled matter in Australia – such language allows a feature of an invention to be claimed, broadly, as being all ways to achieve some function or result. An article on this topic has previously been co-authored by this author, and is titled A US and Australian comparison of “Means plus function”. However, for new patent applications, dogma concerning such language could be shaken by upcoming changes to Australian law. This article discusses the changes and explores their possible impact on means-plus-function language in Australia.

Changes to Australian law

Under a new ‘Raising the Bar’ Bill1, passed by the Australian government, new requirements for patent validity will be applied to all new patent applications (and resulting patents) for which examination is requested on or after 15 April 2013. Some notable changes to the law could, in some circumstances, affect the way means-plus-function language is interpreted or the validity of the resulting patent.

Under the new law, the present requirement to ‘describe the invention fully’ will be replaced with a requirement that the specification description be ‘clear enough and complete enough for the invention to be performed by the person skilled in the art’.  The explanatory memorandum for the new Bill states the intention behind this change as being to ensure that the person skilled in the art is ‘able to perform the invention across the whole width of the claims, not merely in relation to one among other embodiments within their scope’.2
 
Additionally, the present Australian requirement of a claim to be ‘fairly based on the matter described’ in the specification is to be replaced with a requirement for the claim to be ‘supported by matter disclosed’. The explanatory memorandum states that this change is intended to require that the scope of a claim is not ‘broader than is justified by the extent of the description, drawings and contribution to the art’.3

While these changes in law may call for more stringent levels of disclosure in the specification, the changes do not include an accompanying statutory requirement to force claim interpretation to be aligned with the level of disclosure. This introduces some tension between the tightening requirements for validity and the currently broad interpretation of means-plus-function language in patent claims. This tension is most evident in “claims by result”, ie claims that are solely directed to the result of an invention and claim all means for achieving that result.

In view of these changes, there is potential for some claims affected by the new law to have a different interpretation and/or finding of validity than would presently be the case. It remains to be seen how Courts will interpret the changes in law and whether there will be a consequential narrowing of what can be ‘justifiably’ claimed.

Practical strategies to take into account the changes in law

Australian law presently supports the use of broad means-plus-function language for existing patents and patent applications examined under the current law – the new law will not have a retrospective effect on such cases. To have a patent application examined under the current law examination must be requested by 12 April 2013.

It will likely be several years before an Australian Court is given an opportunity to interpret the legislative changes. However, in the meantime, present good drafting practice is likely to provide adequate protection for any foreseeable changes. Independent claims using means-plus-function language can still be pursued, but ideally, to safeguard against a finding of invalidity, multiply dependent subsidiary claims should be included to recite any specific limitations disclosed in the specification that embody the claimed “means”. In some cases, it may also be beneficial to boost the level of disclosure by describing alternative embodiments of the claimed means, as this might add ‘justification’ for the broad means-plus-function language.


1. Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012]
2. Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012], p47
3. Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012], p49

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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