form of s 102 prohibits amendments
Nevertheless, Elanco’s claim
if the resulting specification
amendment by “undisclosed
would “claim or disclose matter
disclaimer” was found allowable,
extending beyond that disclosed …
and the appeal was dismissed.
in the specification as filed” or, for
While acknowledging that narrowing
applications already accepted, if
amendments are not automatically
the resulting claims would not be
allowable, Besanko J said that there
“supported by the matter disclosed
was a “real and reasonably clear
disclosure” of formulations containing in the specification”. The revised
statutory language is intended to
antiseptics other than acridines,
align Australia’s law with European
and rejected an argument that the
exclusion of acridines from the claims and UK patent law, ensuring that
patent applicants cannot “add matter”
was fundamentally inconsistent
after the filing date to address
with the invention described at
an insufficient disclosure of the
filing. This was despite evidence that
invention across its full breadth.
antiseptic acridines possess several
of the preferred properties identified
In the absence of judicial
in the specification for suitable
consideration, the allowability of
antiseptics. It was not common
disclaimers under the new s 102
general knowledge that acridines
remains an open question. The
had these properties, and the skilled
Australian Patent Office appears
person would therefore have found
to consider that disclaimers remain
no positive recommendation in the
allowable even if the disclaimed
specification towards the use of
subject matter is not disclosed
acridine antiseptic compounds.
in the specification as filed. 3 By
contrast, the European Patent Office
Effects of the Raising
interprets Article 123(2) EPC 4 , the
the Bar Act?
equivalent to s 102, as imposing
significantly greater restrictions
Patent applications currently in
on disclaimers. 4 The specification
prosecution are typically subject
as filed must “directly and
to the Patents Act as amended by
unambiguously” disclose the subject
the Raising the Bar Act. The new
3 4
IP Australia Patent Manual of Practice and Procedure, 2.23.8.2A
EPO Enlarged Board of Appeal decisions G2/10, G1/03 and G1/16.
matter remaining in the claim after
the amendment. Claim amendment
by undisclosed disclaimer is exempt
from this strict rule only under
special circumstances, which are not
obviously applicable to the situation
in Boehringer Ingelheim v Elanco.
Given the readiness of Australian
courts to follow European case law
when construing sections of the
Patents Act amended by Raising the
Bar, a cautious approach to the use
of disclaimers may now be warranted
in Australia. Significantly,
a patentee may be exposed to severe
consequences (e.g. revocation
or loss of priority date) if a court
finds that amendments to a patent
were impermissible under s 102,
notwithstanding the approval
of those amendments during
examination by the Patent Office.
Inspire March 2022
In the absence of
judicial consideration,
the allowability of
disclaimers under the
new s 102 remains
an open question.
5 Matthew Overett | Senior Associate
BSc (Hons), PhD Chem, MIP
matthew.overett@pof.com.au