07 Oct Post-Acceptance Amendments of Australian Patents: Lessons from Recent Decisions
The rules regarding patent amendments for Australian amendments change once the patent has undergone substantive examination and stands accepted. The same changed rules also apply after the grant of an Australian Patent.
Unlike some other major jurisdictions such as Europe and the USA which allow a patent to be opposed within a prescribed time period after grant, the Australian system is somewhat different in that every patent is initially accepted (the acceptance step being similar to “allowance” under US Patent Practice) after successful examination and can be opposed for a time period of three months from acceptance (specifically from the date of advertisement of acceptance). In many instances such as oppositions and litigation, the patent applicant may need to amend their claims under the post-acceptance rules for claim amendments as set out in the Australian Patents Act 1990 (Cth). The issue of post-acceptance amendments is therefore important when an opposition is partially successful. Similarly, if some claims of a granted Australian patent are deemed invalid during litigation then post-acceptance or post-grant amendments would be required.
The General Rules for Post-Acceptance Amendments
The general rule for allowability of post-acceptance amendments for Australian patent claims are set out in Section 102 of the Patents Act which stipulates that the amendment cannot extend the scope of the claims as accepted. To determine whether an amended claim falls outside the scope of the initially accepted, a comparison must be made between the amended claims and the claims immediately before the amendment. Therefore, if the accepted claims were previously amended, the original claims are not assessed, and the comparison must only be made with the claims as they were accepted.
Under Australian practice, it is conventional wisdom that the ‘scope of the claims’ means the scope of the entire claim set as accepted by the Australian Patent Office. It had also been well established practice that cherry-picking of particular features or details from different claims that results in a previously undefined invention was not allowable under the rules of post-acceptance amendments. By way of example, post-acceptance amendment to independent claim 1 of an accepted patent application that involves incorporation of subject matter previously found in claim 2 or claim 5 would be permissible. While such an amendment introduces new subject matter into independent claim 1, that subject matter fell within the scope of the claims set when viewed as a whole, before the amendment.
A useful test that has been followed in Australian practice involves an assessment to determine if the post-acceptance amendment of the claims would result in an infringing act which would otherwise have not been deemed as an infringing act if the accepted claims were considered. If a non-infringing act at the time of acceptance would now be deemed as an infringing act then it would be very likely that the post-acceptance amendment would not be permissible. This test was suggested in relation to sec 31(1) of the British Act in The Distillers Co. Ld.’s Application (1953) 70 RPC 221 at page 223.
The wording of Section 102(a) states that “a claim of the specification would not in substance fall within the scope of the claims of the specification before amendment”. In Boehringer Ingelheim International GmbH v Commissioner (2001) 52 IPR 529 at  it was clarified that:
“This means that the things that are within the scope of the claim are not the integers that appear within the claim, but the total invention that the claim defines. For example, if a claim relates to a process that uses a number of pieces of equipment, then the individual pieces of equipment per se do not in substance fall within the scope of the claim.”
The above decision confirmed that post-acceptance amendments were not limited to features previously recited (verbatim) in the accepted claims and that new features disclosed in the specification could be added to the accepted claims by way of post-acceptance amendments provided the test that: “would the amendment make anything an infringement which would not have been an infringement before the amendment?” is satisfied.
However, assessing whether features introduced in post-acceptance amendments are allowable under the revised provisions of the Australian Patents Act can be a difficult issue.
There have been some recent decisions which suggest that the issue of determining allowability of post-acceptance amendments does not require a formalistic approach of looking at whether precise terms from the amended claims (post-acceptance) have been used in the originally accepted claims or the specification. Instead, these decisions suggest that allowability of the post-acceptance amendments will be based on a review of the entire disclosure of the patent and the context in which the original disclosure was made must be taken into account.
Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH  FCA 328
In this decision, the Federal Court of Australia had provided some clarification on the allowability of post-acceptance amendments. In summary post-acceptance claim amendments that had been allowed by the Australian Patent Office were found to be impermissible for not falling within the scope of the originally accepted claims.
In his decision, Beach J. stated that the ‘subject matter will be impermissibly added unless the matter is clearly and unambiguously disclosed in the application as filed’. Beach J. ultimately found that the proposed amendments constitute an impermissible intermediate generalization which is a well-established concept under the rules of the European Patent Convention. The decision also points out that the context of the specification is important and “the Applicant cannot extract features disclosed in one context and introduce them into a specification stripped of that context”. Therefore, post-acceptance amendments to the claims need to be supported by a clear and unambiguous disclosure in the specification or else they are likely to be rejected under s 102(1) for introducing an “intermediate generalisation”.
EMD Millipore Corporation v Asahi Kasei Medical Co., Ltd.  APO 39 (21 August 2020)
In a more recent decision, the Australian Patent Office has confirmed the approach of the Federal Court of Australia by suggesting that the correct approach in considering whether an amendment would result in the specification claiming or disclosing new matter, is to ask whether the skilled person would learn anything about the invention which they could not learn from the specification as filed. In this decision, the amendments were found to be permissible because the Delegate followed the approach outlined in Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH  FCA 328 and determined that the amendments were disclosed in the description.
Asahi’s patent specification stated that the object of the invention was to provide a “porous membrane” by which a useful component such as protein can be recovered in a highly efficient manner while suppressing clogging during filtration of a protein solution and from which only a small amount of an eluate is eluted even when an aqueous solution is filtered. The claims as accepted specified a specific combination of features for the porous membrane. These features included the physical characteristics of the polymer including layers with varying densities and other physical characteristics.
The post acceptance amendments to the claims involved the inclusion of additional features such as location of the layers, limits on pore diameters in the layers, and methodology to calculate previously claimed parameters like the gradient index and pore diameters. These amendments were arguably introduced to address some deficiencies in the claims that had arisen during a patent opposition.
The analysis undertaken by the delegate of the Australian Patent Office relied on the guidance set out in the earlier decision (Commonwealth Scientific and Industrial Research Organisation v BASF Plant Science GmbH  FCA 328) and assessed if the amended claims included subject matter that extended beyond the matter disclosed in the specification. The delegate also analysed if the scope of the post-acceptance amended claims was broader than the scope of the accepted claims. On both of these counts, the delegate found that the post-acceptance claim amendments were permissible.
Michael Buck IP is well placed to guide patent applicants on the best strategies to satisfy these important requirements for post-grant and post-acceptance for Australian patents. If you have any questions, please contact one of our attorneys.