Australia: Supporting evidence in patent specifications

The recent Full Federal Court case of Morellini v Mizzi Family Holdings Pty Ltd [2016] FCAFC 13 has highlighted the danger of using unsupported assertions in patent specifications.

The technology of the case dealt with sugar cane planting, with the applicant committing a fatal error in asserting: "it is found that" inclining a soil mound by about 40 degrees provided superior warming of the soil by the sun.

During prosecution, the applicant had argued the soil mound inclination was a significant feature of the claim that distinguished it from the prior art.

The problem was that there was no evidence that the soil mound incline had any effect on heating of the soil. The applicant tried to argue that this was part of their "own experience and conclusions". However the Court rejected this argument as totally speculative.

The Court concluded the patent was invalid for false suggestion or misrepresentation. Hence, the applicant's somewhat innocuous use of the term "it has been found", rather than say "it is conjectured, thought or believed", has led to the destruction of its patent rights.

The obvious takeaway from the case is to review specifications to revise assertions that are not backed by evidence.

Peter Treloar

Shelston IPLevel 21, 60 Margaret StreetSydney NSW 2000, AustraliaTel: +61 2 9777 1111Fax: +61 2 9241 4666email@shelstonip.comwww.shelstonip.com