Section 40

I was reading yesterday about s40 of the Patents Act. This is the kind of fascinating lunch break you are missing out on.

The gist of it (s40) has changed recently, and it is starting to be something I need to know about in detail.

All you need to know (assuming you wish to keep reading) is that the part of s40 that interests me relates to the balance in a patent between the description and the claims. The description “describes” the invention in detail and the “claims”‘define the monopoly.

Imagine I describe in detail a car that has four wheels and an engine and can carry me from A to B under the power of combusting hydrocarbons, without real horsey power. This might seem revolutionary!

What’s my invention? What claim can I validly make to it?

It has been the case in Australia that based on one embodiment as described above, provided it is new and not obvious, I can claim all forms of transport (cars, motorcycles, aeroplanes) using just one embodiment as basis. My claim would be “fairly based” on the description.

In other words, I need only one working embodiment to support a really broad claim. The High Court said so in a very famous case.

The law evolved differently in Europe and the US. In the UK for example. they require that a claim is “supported by the disclosure” which is thought to be a much narrower test. Using my example above, only a claim specifically directed to a car would be arguably valid in the UK unless the general principle underlying the invention could be shown to be applicable to a whole group of vehicles.

The Aussie legislator has amended our Act to bring it more into line with the UK. The idea is that this should be fairer and result in less confusion.

The thing that tickled me about the article is that he laboured the point that, notwithstanding the legislatures intent, the Courts can do what the hell they like. They do not have to change their practice to harmonise with other countries at all and instead they can interpret the Act any which way they like and thus they can continue to follow their own precedent as they see fit.

It has always seemed to me that the Court interprets the Act to suit the case. The reason that the Aussie and UK laws in this area of “basis” diverged in the first place is because, in Australia, the case was a mechanical widget, and in the UK the case in question was a biologic. Biotech cases always have a public heart string involved (think breast cancer genes) so the Court is somewhat forced to take a hard line.

If the big drug companies want to see laws interprets broadly by the Courts, they have to temporarily stop taking litigating in relation to their drugs. Instead they have to find some simple boring mechanical widgets to litigate to set down all the precedents and then swoop in and clear up. Eventually the law will swing back to suit the drugs, so then they have to litigate widgets again. In cycles.

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