Cases on s 40(2)(a), its predecessors and equivalent provisions
67 Many of the authorities dealing with s 40(2)(a) of the 1990 Act and its predecessors, when properly understood, were considering the obligation to describe the invention fully, the sufficiency requirement. Rarely were cases specifically directed to the question of an obligation to provide the best method known to the applicant of performing the invention. As Blanco White pointed out, the best method requirement is not commonly advanced as a ground for revocation: Blanco White TA, Patents for Inventions and the Protection of Industrial Designs (5th ed, Stevens & Sons, 1983) (Blanco White (5th ed)) at [4-514]. In Terrell C and Corsellis DH, The Law and Practice Relating to Letters Patent for Inventions (7th ed, Sweet & Maxwell Ltd, 1927) at 135 under the heading 'Good Faith and Disclosure of Best Method', it is stated: '[i]f a patentee suppresses anything, or if he misleads, or if he does not communicate all he knows, his patent is bad'.
68 Many of the cases that purport to deal with s 40(2)(a) do not consider, and make no reference to, the question of the obligation to provide the best method. However, that does not mean that there is no such obligation. It means that the issue was not raised and that the argument was limited to the sufficiency requirement, the subject of the attack. This does not lead to the conclusion that those cases determined that the only obligation under that section was to comply with the Kimberly-Clark test, being a test of sufficiency.
69 Indeed, the same observation must be made of Kimberly-Clark itself. In that case, the issue was the sufficiency of the description of the invention, a baby's nappy with elasticised side pockets. Addressing this issue, the Court said (at [25]):
'[t]he question is, will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?'
Read in context, the Court was not thereby setting out a test for fulfilment of the requirements of s 40(2)(a) as a whole. It was not argued that the patentee had failed to disclose a best method. The test is directed at the issue of sufficiency of description.
70 As noted above, the Australian approach has followed from the principles established in the United Kingdom.
71 In British Dynamite Company v Krebs (1896) 13 RPC 190, Lord Hatherley said that where a large field for experiment was left open and the inventor had known of the existence of the best material at the time of filing, where that material was better than other materials specified, then the inventor was bound to give the best means at the inventor's disposal in order to achieve the result. It would have been an objection to the patent to say that the inventor, 'being in possession of the best mode of producing the most valuable dynamite, had not informed the public of that method'. This obligation was discussed separately to the question of sufficiency, namely whether or not the description was sufficient to enable the ordinary workman to make and use dynamite. In the legislation in force at that time there was no explicit best method requirement; the patentee was obliged to describe the invention's 'manner of performance'.
72 The link between the extent of the obligations of disclosure and the nature of the invention was made early. For example, in Edison & Swan Electric Light Company v Holland (1889) 6 RPC 243 at 279, the Court of Appeal said that the patentee must state 'in what manner the patented invention is to be performed' so that others know how practically to avail themselves of the invention when the patent is expired: 'how they are to do what is necessary to carry out the new invention', that is, how the invention is to be performed.
73 In Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 29 RPC 245 at 265 (cited by the Full Court in Firebelt), the Court of Appeal differentiated between two duties incumbent upon a patentee, as provided in the statute. First, the obligation by which the patentee must 'particularly describe and ascertain the nature of the invention' and secondly, that by which the patentee must 'particularly describe and ascertain 'in what manner the same is to be performed''. The Court of Appeal made it clear that these two duties are distinct and have distinct objects, the second of which relates to the consideration to the public in return for the grant of the monopoly and the ability to enjoy 'to the full the benefit of that invention' (at 265-266). The Court of Appeal dealt with a broad, general description of a method and said, when dealing with the question of sufficiency: 'to say that an invention consists in causing sulphur alone to react on diamidonaphthols is so vague as to 'describe and ascertain' nothing'; it was common ground that no knowledge previously existed of any reaction between sulphur alone and diamidonaphthols. Their Honours characterised such a description of the invention as a general description which included every kind of reaction between the two compounds, however produced. While they concluded that that could not be said to describe and ascertain the nature of the invention, it also failed to perform the second duty of describing the way in which the invention was to be performed. In relation to that second duty, the Court of Appeal said (at 266):
'[t]hey cannot appeal to common knowledge and say that it would suffice to enable a chemist to carry out the invention, because their own witnesses prove that no knowledge existed at the date of the Patent as to any reaction between sulphur and diamidonaphthols…'
74 In expanding upon their reasoning (at 269), the Court of Appeal said that:
'it is settled law that a patentee must act towards the public uberrima fide, and must give the best information in his power as to how to carry out the invention. He is therefore bound to tell the public all the steps that can advantageously be taken in carrying out the invention. But he is not limited to claiming only the best way of carrying it out'.
75 That is, a patentee was held to be bound to give the best information in his (or her) power as to how to carry out the invention. This was an element of the required good faith on the part of the patentee and the requirement to give to the public the consideration of knowledge of the best method that corresponds with the obtaining of the benefit of monopoly.
76 In looking to the requirements of best method, Blanco White at [4-502] raises the question of whether a patentee needs to give directions as to techniques of manufacture where the invention claimed is only the finished article: Blanco White (5th ed). This is a reference to Illinois Tool Works Inc v Autobars Co (Services) Ltd [1974] RPC 337, on which Servier relies. Blanco White commented at [4-502] that this case meant that it was not clear whether or to what extent there is such an obligation but questioned the outcome in a footnote. Under the separate heading 'Meaning of 'best method'', there is a statement that the practice is to disclose the most perfect or most complete embodiment known, irrespective of commercial merit. A footnote observes that 'concealment of simplifications known to be commercially desirable should invalidate'.
77 In Norton and Gregory Ltd v Jacobs at 277, the Court of Appeal considered the circumstance where an additional requirement to carry out the invention, which would improve its performance, was not mentioned in the specification, the requirement being one that was known to the patentee at the time that the patent was applied for. The Court of Appeal stated that:
'[i]t was therefore incumbent upon him to disclose it in view of Section 25(2)(j) of the Act and his omission to do so is sufficient of itself to invalidate the Patent. Here again, the fact … that a skilled chemist would know or could readily ascertain the necessity of leaving the print acid or neutral does not in our opinion afford any justification for omitting so essential a matter from the Specification'.
78 In s 4(3) of the Patents Act 1949 (UK), the obligations were separately provided for:
Every complete specification:
(a) shall particularly describe the invention and the method by which it is to be performed;
(b) shall disclose the best method of performing the invention which is known to the applicant for which he is entitled to claim protection;
(c) shall end with a claim or claims defining the scope of the invention claimed.
79 It may be accepted that this clear separation of obligations provided the framework for consideration in the cases that followed, but those reasons also demonstrated fidelity to the reasons behind the explicit separate requirements.
80 Accordingly, one sees observations such as those in Blanco White (5th ed) (at [4-502]) that the specification must in the first place contain such instructions as will enable all those to whom the specification is addressed to produce something within each claim 'by following the directions of the specification, without any new inventions or additions of their own' and without 'prolonged study of matters which presents some initial difficulty' (citing No-Fume Limited at 243 and Valensi v BRC [1979] RPC 337 at 377 respectively) and an explanation of the nature of the invention as well as the manner of performing it. These are separate requirements, although the description meeting each obligation is not necessarily separate. The commentary continues to state that the necessary instructions to enable a skilled worker to carry out the invention may or may not suffice to make its nature clear, and that 'somehow or other' the skilled worker must be told what it is he (or now she) is trying to do to work the invention. Importantly, there is then a further observation that the specification ought to render the working of the invention simple, not merely render it impossible without further invention. Non-disclosure of best method is dealt with separately (at [4-514]) and following, noting that this is not a common objection.
81 Van Der Lely NV v Ruston's Engineering Company Limited [1993] RPC 45 contains a discussion about the requirements of s 4(3) of the Patents Act 1949 (UK). Failure to comply with either of those requirements provided a ground for revocation. Lord Justice Nicholls said (at 56) that where the claim in issue was to a product, a power harrow, the best method of performing the invention within s 4(3)(b) was the best example of the implement known to the applicant at the relevant time and for which he was entitled to claim protection, where "best" means best in practice and not in theory. The applicant was not required to disclose the best method of using the invention where the method of use was not a feature that was part of the invention claimed. His Lordship said that the distinction between a product and a process was not meaningful because the best way to use the invention would have a significant bearing on what was the best exemplification of the invention: the best way to use the invention would affect the manner in which the implement would be constructed. Further, the patentee was required to disclose, as an example of the implement, the implement with the better method of operation found to have been known to the patentee.
82 The analogy with the present case is apparent.
83 In Human Genome Sciences Inc. v Eli Lilly & Co [2013] RPC 22, Sir Robin Jacob, with whom Lewison and Hooper LJJ relevantly agreed, considered the question of "sufficiency" of a claim to an antibody that specifically binds to a polypeptide. The relevant statutory language by this time was Article 83 of the European Patent Convention which provided that a European patent application 'shall disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art'. Notably, that does not state a requirement for disclosure of the best method. Nevertheless, Kitchin J had summarised the effect of this provision as including such a requirement. His Honour had said that in the case of a product claim, it means 'making or otherwise obtaining a product'; in a process claim it means 'working the process'. The claimed invention encompassed many, probably millions, of antibodies, some of which would bind well and others less so, but they could all be made and isolated (at [13]). Sir Robin said (at [16]) that at the level of generality of the patent, all of the antibodies would have a 'use', including uses other than pharmaceutical or diagnostic use, so that each member of the class had potential utility. Sir Robin said (at [23]) that '[e]ven if the antibodies to be used for the products of claims 18 and 19 do form a narrower class which cannot be ascertained without undue effort that does not mean that the whole class is not enabled'. However, at [29], Sir Robin turned to discuss an argument based on Pharmacia v Merck & Co Inc [2002] RPC 41, where the claim was to a formula consisting of a large number of compounds with no limitation in the claim as to purpose or use. Lord Justice Aldous had said (at [20]) that when the specification was read as a whole, it was clear that the class of compounds was useful for a specific purpose and that was the contribution that merited the monopoly. The claim was held to be insufficient because it included compounds which did not have the promised activity and was therefore not enabled across its scope even though all the compounds could be made. Sir Robin distinguished Pharmacia by saying (at [31]) 'the skilled reader [is not] led to expect any specific activity, only a host of possibilities which may or may not in fact be'.
84 In the present case, the reader of the Patent has been led to expect characteristics comparable to the stability features set out in the specification. Those features are described in the text and highlighted in tabular form, and said to be the advantage of this invention over perindopril erbumine.
85 Servier relies upon a number of authorities which have dealt with s 40(2)(a) but without any reference to, or consideration of, the words of that section that refer to the best method known to the patentee. For example, in Lockwood Security, the High Court endorsed Kimberly-Clark and reiterated (at [60]) that, for the purposes of s 40(2)(a), it is not necessary for the inventor to disclose all the alternative means by which the thing or result may be achieved, it is enough to satisfy the Kimberly-Clark test.
86 The characterisation of s 40(2)(a) (or its predecessor s 40(1)(a) of the 1952 Act, in the same terms) as consisting of a first 'limb' and a second 'limb', with the patentee required to comply with each limb, has been a feature of a number of cases where the totality of the obligation was considered.
87 Servier submits that there is no scope in the Act, contrary to the consideration of the UK position as set out in Aldous G, Falconer D and Aldous W, The Law and Practice Relating to Letters Patent for Inventions (11th ed, Sweet & Maxwell Ltd, 1965) at [228] concerning questions of good faith. Ultimately, Servier submits that allegations of good faith as a ground of revocation disappeared with the 1952 Act where s 100, as does s 138 of the 1990 Act, provided that patents would only be revoked on the specified grounds. While Dr Bodkin (in Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) at [5270]) says, citing Firebelt, that the obligation to give the best method is to ensure good faith on the part of the patentee, Servier says that this may be the purpose but it is not the best method test.
88 In Rescare Ltd v Anaesthetic Supplies Pty Ltd (1992) 25 IPR 119, Gummow J considered the question of best method as a distinct subject in his Honour's reasons. Justice Gummow traced the history of this requirement as set out in various statutes in Australia and the United Kingdom. His Honour noted (at [133]) that the requirement to disclose the best method persisted despite legislation omitting particular reference to "best method" and had been a ground of appeal under general law even before legislative provision for the inclusion of a best method. This, his Honour said:
'appeared to have been on the footing both that the requirement of making known the best method ensured good faith on the part of the applicant so that grants would not be obtained on false suggestions or representations, and that the patentee should not get the benefit of a monopoly without giving to the public the corresponding consideration for the best method of performing the invention'.
89 His Honour observed that it was the enactment of s 40 of the 1952 Act that brought with it, in Australia, express reference to the disclosure of the best method, although differently expressed from the requirement in the Patents Act 1949 (UK). His Honour said:
'… section 40 uses the words 'fully describe the invention' and the requirement of 'best method of performing the invention which is known to the applicant' is stated as being included within the obligation to fully describe the invention, rather than being expressed disjunctively', as it was in para (h) of [s 23(1) of the Patents Act 1949 (UK)].'
90 That section's predecessor, s 36 of the 1903 Act, provided:
A complete specification must fully describe and ascertain the invention and the manner in which it is to be performed and must end with a distinct statement of the invention claimed.
91 Justice Gummow noted that in Welch Perrin & Co Pty Limited v Worrel, Dixon CJ, Kitto and Windeyer JJ had said that the differences between s 40 of the 1952 Act and s 36 of the 1903 Act (which was modelled on the Patents, Designs and Trade Marks Act 1883 (UK)) were 'probably of no importance', the main requirements being that the specification shall fully describe the invention and the manner in which it is to be performed. Nevertheless, his Honour concluded that there had been an obligation on the part of an applicant to disclose the best method known by the inventor, notwithstanding the differences in the text between the Australian and UK Acts.
92 Servier points out that s 86(1) of the 1903 Act provided that '[n]o proceeding by way of scire facias' shall be taken to repeal a patent. Returning to Rescare, Servier points to Gummow J's commentary at 133, where his Honour discussed the express provision as to the disclosure of best method under the UK Act, which was not introduced into British legislation until 1932. However, from Gummow J's explanation, the subsequent removal of those words did not alter the position, concerning the consideration provided by the applicant for a patent and that the making known of a best method ensured good faith and such consideration.
93 In Eli Lilly & Co v Pfizer Overseas Pharmaceuticals (2005) 64 IPR 506, Heerey J considered sufficiency and best method under separate headings. His Honour concluded that the ground of insufficiency as determined by the Kimberly-Clark test was not made out. Justice Heerey then turned to deal with what he clearly considered a question separate to that of sufficiency and the Kimberly-Clark test, namely, the 'best method'. His Honour addressed a number of questions about the best method: whether it must be identified as the best method known to the patentee, what was the best method known to the patentee, whether the best method was disclosed and, if so, when.
94 The link between best method and the invention is also explained in Firebelt, where the Full Court (Spender, Drummond and Mansfield JJ) explained (at [48]) the requirement of the obligation to disclose the best method of performing the invention which, notably, their Honours discussed under the heading 'Non-disclosure of best method of performing the invention':
'[this] requirement is to ensure good faith on behalf of the patentee, and to protect the public against the patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of the monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention'.
95 In CCOM Pty Ltd v Jiejing Pty Ltd (1994) 51 FCR 260 (at 277), the Full Court (Spender, Gummow and Heerey JJ) stated a number of propositions drawn from the authorities, including a citation with approval of the statement by Lord Moulton in British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 (at 650), dealing with the different duties upon the patentee in the filing of a provisional specification and the filing of a complete specification in the context of fair basis:
'…there was the danger of confining [the inventor] to a mere outline which gave delimitation, but did not tell the public the best way within those limits of performing his invention. The one duty required him to state his invention in its most general form, and the other duty required him to state it at its best and therefore in a very special form'.
96 In Pfizer (at [327]), the Full Court explained s 40(2)(a) in terms of "two limbs", where the first limb, that the invention be described "fully", imports the requirement of sufficiency of description, the Kimberly-Clark test. Accordingly, their Honours considered sufficiency and best method separately. Addressing the first limb, their Honours stated that the requirement of full description of the invention depends for its content in part upon the understanding of the invention, namely 'the embodiment which is described and around which the claims are drawn' (citing a statement in AMP v Utilux at 127, approved in Kimberly-Clark). They noted that in Lockwood Security, the High Court had held (at [60]) that it is not necessary for the inventor to disclose all alternative means of performing the invention as long as the addressee is enabled to produce something within each claim.
97 Justices French and Lindgren, with whom Crennan J agreed, said at [361] that a historical review of the cases showed that even before the statute expressly required it, a statement of the best method of performance of the invention was required by the courts. Their Honours observed that an express requirement that a complete specification fully describe the invention, including the best method of performing the invention which is known to the applicant, appeared in s 40(1) of the 1952 Act, re-enacted as s 40(2)(a) of the Act. At [374] their Honours placed the best method requirement into context. They said:
''[d]isclosure of the best method known to the applicant of performing the invention' (a subjective notion) is a part of describing the invention 'fully'.'
As their Honours observed, the requirement to disclose the best method known to an applicant safeguards against an applicant's holding back with a view to obtaining the benefit of the patent monopoly without conferring on the public the full consideration for the granting of the monopoly.
98 In Expo-Net, Bennett J considered that s 40(2)(a) imposed two requirements: that the description in the specification be sufficient, which her Honour noted had been described as the first limb of the section (sufficient instruction to enable the person of ordinary skills to work the invention without inventive step or undue experimentation) and the further requirement, the second limb, that the specification include the best method of performing the invention known to the inventor. Justice Bennett considered whether or not there had been compliance with the requirement of describing the best method for performing the invention.
99 The claims were to a process. In that circumstance, Bennett J adopted an analysis whereby an applicant for revocation on the ground of failure to disclose the best method must show that (at [16]):
The method which the patentee failed to disclose is a method of performing the invention.
The method is in fact a better method of performing the invention than the method disclosed in the specification.
The method was known to the patentee at the time when the application for the Patent was lodged at the Patent Office.
The method is not disclosed in the specification.
The patentee knew that the method was better than the method(s) described in the specification.
100 As explained by Bennett J in Expo-Net at [18]:
'The Full Court [in Firebelt] emphasised (at [48]) that a patentee acting uberima fide must give the best information in his or her power on how best to carry out the invention and noted that the inventor is not limited to claiming only the best way of carrying out the invention. The Full Court reiterated that it is part of the consideration for the grant of a statutory monopoly that the inventor give to the public sufficient instruction to work the invention without the need for any new inventions or inventive additions, which of itself obliges the inventor to disclose the best method of performing that invention of which he or she knows. This last requirement has been noted over time (see e.g. Blanco White in Patents for Inventions, 4th ed, Stevens, 1974 at para 4-502). As French and Lindgren JJ (with whom Crennan J agreed) observed in Pfizer Overseas Pharmaceuticals & Ors v Eli Lilly & Co (2005) 225 ALR 416 at [374], the requirement that an applicant disclose the best method known to him or her of performing the invention safeguards against an applicant's holding back with a view to getting the benefit of a Patent monopoly without conferring on the public the full consideration for the grant of that monopoly.'
101 Servier relies upon DSI Australia (Holdings) Pty Limited v Garford Pty Limited (at [327] and following), where Yates J considered s 40(2)(a) of the Act. In that case the mode of operation of the claimed brake was not explicit on the face of the specification. The claims of the Patent were to an apparatus and the method for manufacturing certain rock bolts. His Honour stated (at [334]) that the patentee's obligations under s 40(2)(a) do not extend to describing or cautioning against something that will not work, saying that 'the patentee's only obligation is captured by the question posed by the High Court' in Kimberly-Clark. From his Honour's reasons, it is apparent that he was considering the sufficiency of the description for the person of ordinary skill and was not dealing specifically with the question or allegation of a failure to disclose the best method. This is clarified to some extent at [336] where, in considering the challenge for alleged inutility, his Honour noted that the case on invalidity on that ground was the same basis as the case on 'insufficiency', noting the distinction as expressed in Blanco White (5th ed) at [4-404]: "insufficiency is when you can't make the thing, inutility is when you can but it doesn't work when you have".
102 Servier submits that the best method requirement is 'a subset of enablement' and that the only obligation to disclose a method is if it requires something which would not be understood by the skilled addressee. It relies on AMP v Utilux at 128-130, where McTiernan J distinguished between patents involving products and patents for methods. Servier says that it is only with the latter that it is necessary to set out the steps.
103 The authorities that have dealt with s 40(2)(a), its precedents and equivalents, must be understood in context. The first, and most important, factor is the nature of the invention being described and claimed. Servier divides this simply into products and processes but that is not sufficient. It is necessary to understand the invention itself in order to appreciate what is required of an inventor by way of disclosure in the specification in order to secure a monopoly from the public. In some cases, the claim to a product will require no description of the method of obtaining it and it can be left to the skilled worker (as in AMP v Utilux). In other cases, the product claim, properly understood, will require sufficient directions in order to obtain the monopoly.
104 The Full Court in Firebelt observed that the statutory obligation was an obligation to disclose the best method of performing the invention. Their Honours also said (at [53]), referring to the requirement of s 40(2) of the Act (in its totality), that the patentee is required to give the best information in his (or now her) power as to how to carry out the invention (emphasis in the original). The Full Court was of the view that the requirement is ordinarily satisfied by including a detailed description of one or more preferred embodiments of the invention and concluded in that case that, by taking account of the rest of the specification together with the figures, an embodiment was depicted of the claimed device.
105 In Patent Law in Australia Dr Bodkin says (at [5270]) that the requirement to describe the best method known to the Patentee:
'is to supplement the necessity for a full description by requiring the patentee to disclose additional information which, if not available to potential users of the invention, could place the patentee in a stronger competitive position even though no patent protection existed [i.e. when the patent ceases to be in force]. It is included to help ensure good faith on behalf of the patentee'.
106 Citing Firebelt (at [48]), the author continues (at [5280]) to give the opinion that the patentee must disclose what it, subjectively, perceives to be the best embodiment of the invention known to it at the relevant time, whether or not a different embodiment is later shown to be better. Further, what must be disclosed is the best practical method of carrying out the invention as distinct from the best method in theory (citing Van Der Lely at 56). That is, the requirement is to disclose the most effective means of carrying out the invention known to the patentee at the relevant time. The view is also expressed that it appears not to be necessary to describe the best method for making an apparatus or the best method of using an apparatus (citing Illinois Tool Works and Van Der Lely).
107 While it cannot be held to be definitive or directory, it is worth a passing observation that in the Explanatory Memorandum for the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (Cth) (the Explanatory Memorandum) at Item 8 concerning s 40 of the Act, it is stated that the existing requirement for a complete specification to include the best method known to the applicant of performing the invention remains unchanged. This was in connection with a proposal, subsequently enacted, to separate the requirements of s 40(2)(a) into two distinct paragraphs:
(2) A complete specification must:
(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention…
108 From the above authorities the following principles may be gleaned:
Different policy reasons support the obligation to describe the invention fully and the obligation to provide the best method known to the patentee of performing the invention. The purpose of the former obligation is to circumscribe the monopoly granted to the patentee; the purpose of the latter is to allow the public the full benefit of that invention when the monopoly expires.
Although a patentee might not be explicitly required to act in good faith, principles of good faith underlie the best method requirement.
Even where legislation has not included an explicit 'best method' requirement, courts have considered it to be a separate and additional requirement to the obligation to provide a sufficient description of the invention.
The nature and extent of the disclosure required to satisfy the best method requirement will depend on the nature of the invention itself. Accordingly, a distinction between products and processes that ignores the specific features of the invention claimed is unhelpful.