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

by FPA Patent Attorneys

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.

© FPA Patent Attorneys | Attorney Advertising

Written by:

FPA Patent Attorneys

FPA Patent Attorneys on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.