The disclosure of the “best method known to the applicant of performing the invention” is a challenge that faces patent attorneys tasked with drafting patent specifications. The Federal Court of Australia has published a transcript of a speech by Justice Downes entitled: “Disclosure of the best method – how much is enough?” It is a useful short guide for patent attorneys that are faced with this question in practice.
The requirement finds its origin in section 40(2)(aa) of the Patents Act 1990 (Cth).
Her honour sets out that it is critical to identify the invention. In Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc (2024) FCR 19 (Zoetis) it was held that the “invention” refers to the “embodiment which is described and around which the claims are drawn. In order to determine whether the best method has been disclosed, “it is necessary to consider both the description of the invention and the claims.” It follows that clarity is important. Definitions should be used to address ambiguity.
In SARB Management Group Pty Ltd (t/as Database Consultants Australia) v Vehicle Monitoring Systems Pty Ltd (2024) 176 IPR 391; [2024] FCAFC 6, an attempt was made to summarise the invention by referring to consistory clauses. Consistory clauses are often provided in specifications under a “Summary” sub-heading as a way of summarising the invention as defined in the claims. The Full Court rejected this approach. Even so, it remains conventional practice to includes such a summary in specifications. These consistory clauses are often a number of paragraphs that are based on the claims. Such an approach can be useful for some jurisdictions, such as Europe.
In Zoetis the Full Court considered the earlier Full Court decision of Firebelt Pty Ltd v Brambles Australia Ltd (2000) FCA 1689 (Firebelt), to illustrate how the law has changed. The relevant claim was to a lid opening device. There was evidence that the invention would not work without a lid opening device. The Full Court set out that there was no statutory obligation to describe which of the contemplated lid opening devices was considered to be the best. In Zoetis the Full Court set out that the form of the claims is not determinative. The fact that none of the claims in Firebelt was to a lid opening device operating at any particular time could not of itself be an answer to whether the best method is disclosed if the timing of the operation was advantageous to the working or the quality of the achieved outcomes.
The aspect of good faith on the part of the patentee was also considered. In Firebelt, the Full Court referred to the principles of good faith on the part of the patentee. Referring to the Full Court in Zoetis her honour said that bad faith on the part of the patent applicant is irrelevant if the best method is disclosed, and good faith on the part of the patent applicant is irrelevant if it is not disclosed. In other words, debating the bona fides of the patent applicant is incapable of bearing upon the question the statute poses.
The Full Court in Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 (Servier) set out that section 40(2) is directed to the method of performance of the invention. The patent claims define the monopoly, but the nature of the invention is as described in the whole of the patent specification.
Generally, the more critical or necessary the information is to reproducing the invention, the more likely it is that the information should be included. This should be relatively easy to assess once the invention has been properly identified, including the particular advantages achieved by performing the invention. These should not necessarily be described as “advantages” specifically. However, the utility of the embodiments described in the specification can be highlighted with reference to improvements over the prior art. This can help to anticipate potential inventive step issues that may be raised by an examiner, allowing the applicant to refer to passages in the specification that support arguments.
In Servier, the Full Court described the best method requirement as follows: “…where an inventor in fact knows of a method at the time of filing the complete patent application, which has taken the methodology to a more satisfactory stage or provides more certainty so that the public may more quickly and easily utilise the invention for which a monopoly is granted, the inventor is under an obligation to disclose that method”.
In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd [2018] FCAFC 71, the Full Court set out that the patent applicant is not entitled to withhold information that is necessary to enable the skilled addressee to perform the invention in accordance with the invention merely because the skilled addressee could ascertain such information by routine experimentation. Whether the applicant should disclose relevant information will depend on the importance of the information in question, the practicality of disclosing it, and the extent of the burden imposed on the skilled addressee who is left to rely upon routine experimentation. The question is to be addressed in a practical and common-sense manner.
Issues relating to disclosure in a patent specification should be addressed as early as possible in the drafting process. The patent attorney should be asking the inventor(s) questions that tease out the best method of performing the invention. Where possible, the inventor(s) should provide advantages over prior art and should also consider alternative embodiments of the invention that can be described in the specification.