The patent system is premised on a quid pro quo. In Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27 (“Servier“), the Full Federal Court neatly encapsulated this, citing Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 29 RPC 245 at 265 (which was also cited by the Full Court in Firebelt Pty Ltd v Brambles Australia Ltd & Ors [2000] FCA 1689) (“Firebelt”). A patentee has a first duty to “particularly describe and ascertain the nature of the invention” and a second duty to “particularly describe and ascertain in what manner the same is to be performed.” The second of these two duties relates to the consideration to the public in return for the grant of the monopoly and the ability to enjoy “to the full benefit of that invention” (at 265-266). Thus, the patentee must disclose the invention, particularly best method of performing the invention.
In Servier, the Court referred to CCOM Pty Ltd v Jeijing Pty Ltd (1994) 51 FCR 260 (at 277) in which a statement by Lord Moulton in British United Shoe Machinery Co Ltd v A Fussell & Sons Ltd (1908) 25 RPC 631 (at 650) was approved:
- “…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.“
That there are two duties has been clarified in the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, as result of which the Patents Act 1990 (No. 83) now contains two distinct provisions within s40(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; and...”
As set out by the Court in Servier, “[t]he 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.”
In Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710, Bennett J set out a list of requirements for an applicant to show for revocation on the ground of failure to disclose the best method of performing the invention:
- 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.
Her Honour set out that the Full Court in Firebelt emphasised 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 must disclose the invention to the extent that the public is given sufficient instruction to work the invention without the need for any new inventions or inventive additions That obliges the inventor to disclose the best method of performing that invention of which he or she knows.
The requirement that the method was known to the patentee at the time when the application for the Patent was lodged is important. In GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No. 2) Limited v Apotex Pty Ltd [2016] FCA 608, Beach J set out that:
“[i]n terms of knowledge, it is the patent applicant’s relevant subjective state of mind that must be proved by the party seeking revocation.”
This was cited with approval by White J in Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA, who set out that:
“Ordinarily, one cannot disclose what one does not know, although there may be circumstances in which a person can be taken to have knowledge of matters to which the person has ready access. The fact that the law, in some circumstances and for some purposes, deems a person to be imputed with knowledge does not alter the capacity in fact of the person to disclose matters of which he or she is unaware.”
It is incumbent on patent practitioners to make a full enquiry of their clients during the initial stages of preparing a patent specification. It is hardly surprising that clients may be coy about full disclosure, particularly of the best method. Some industries are highly competitive and it may be tempting to grasp at the promise of both patent protection and secrecy. Unfortunately, that promise is empty. The very raison d’être of our patent system relies upon a full and frank disclosure of the invention, including the best method of performing it.