In a decision that will be of interest to all users of the patent system, but in particular those in the mining industry, the Federal Court of Australia (in Cytec Industries Inc. v Nalco Company  FCA 970) has upheld a decision of the Commissioner of Patents refusing to grant a patent on the basis that the patent claims extended beyond the technical contribution of the invention disclosed. For that reason, the patent claims did not satisfy the requirements of ‘support’ and ‘clear enough and complete enough’ disclosure.
The decision is noteworthy for many reasons, including that:
- it underscores the importance of not overreaching when drafting patent claims (even where the claims are conventional in form); and
- it serves as a reminder to patentees not to overreach when defining the scope of their invention in their claims. The claims must be supported by the specification, and not travel beyond what is disclosed in the specification. In particular, the specification must enable the person skilled in the relevant art to perform the invention across the entire scope of each claim, without undue experimentation.
It is worth noting that the requirement for the invention to be performed over the full scope of the claims was introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth), which applied to the patent in suit. Prior to that amendment, it was sufficient for the skilled person to be able to produce a result that fell within the scope of a claim.
Nalco Company (Nalco), part of the global chemical company Ecolab, applied for Australian Patent No. 2012220990 for ‘reducing aluminosilicate scale in the Bayer process’ (Patent).
The Bayer process is a longstanding method used around the world to extract alumina from bauxite to produce aluminium metal. The Bayer process involves processing the bauxite through a range of equipment and, over time, a scale of aluminosilicate (an impurity in the bauxite) can build up on the surfaces of that equipment in the form of a hard, glass-like film. That scale (known as DSP) can obstruct the equipment and reduce its efficiency.
A common method of removing DSP usually involves taking the equipment offline and carefully diluting it in acid – a generally messy and expensive process. An alternative cleaning process involves the use of chemicals in the bauxite liquor which reduces the build-up of DSP. At the priority date of the Patent, various chemicals were available for this purpose, including those manufactured by Nalco’s competitor, Cytec Industries Inc. (Cytec). The Patent claimed a method for reducing the build-up of the DSP by adding certain chemicals to the liquor.
Cytec was partially successfully in opposing the grant of the Patent before the Australian Patents Office. Cytec appealed to the Federal Court in relation to the parts of the opposition where it did not succeed. Nalco cross-appealed.
A key feature of the Patent was that unlike the chemicals used in previous chemical treatment processes, the chemicals claimed in the Patent were all small molecule scale inhibitors.
At the relevant time, section 40(3) of the Act required that the claim(s) of a patent must be ‘clear, succinct and supported by [the specification].’
The requirement of ‘support’ is a fundamental part of the patent system, which is sometimes referred to as the ‘patent bargain’ or the ‘patent quid pro quo’. That is, a patentee can only be granted a monopoly if the method for performing the claimed invention is adequately disclosed in the specification. This means that third parties reading the patent will be able to perform the claimed invention when the patent has expired. That is the ‘bargain’ – the patentee is granted a monopoly for a fixed period of time, in exchange for publicly disclosing how to perform its invention.
For a specification to ‘support’ a claim, the specification has to do more than mention the features which appear in the claim.
In this case, claim 1 provided for:
‘A method for the reduction of aluminosilicate containing scale in a Bayer process comprising the step of:
- adding to the Bayer process stream an aluminosilicate scale inhibiting amount of a composition comprising at least one small molecule
- selected from the group consisting of compounds [(I)……(LX)]
- within a product mixture formed from the reaction of [certain compounds]’
The construction of this claim – and in particular the scope of the ‘composition’ to be added to the Bayer process – was disputed by the parties.
The decision turned on construction of the words ‘at least one’ (small molecule). Conventionally, references in a patent to ‘at least one’ will be interpreted to include ‘only one’. Consistent with that, Justice Burley found that claim 1 included not only a complex mixture formed by the reaction of the compounds claimed, but also included a composition formed from the claimed reaction which consisted entirely of one type of small molecule. This was despite the fact that, as one expert put it:
“The probability of a single small molecule emerging within the reaction mixture would be like trying to win the lottery in every country in the world with the same six numbers on the same weekend.”
In finding that claim 1 included a composition which consisted solely of a small molecule, his Honour relied on the conventional practice that the words ‘at least one’ in the claim included ‘only one’.
Although the specification disclosed how to make a composition comprising a complex mixture of molecules, it did not teach how to make a mixture comprising of one small molecule alone. Rather, his Honour found that producing a single small molecule by the reaction claimed ‘would arise only by random happenstance, and not by virtue of any disclosure in the specification’.
Fatally for Nalco, his Honour therefore found that ‘Nalco has claimed something despite not disclosing how it is to be done’.
A related requirement of support is that the specification must 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’ (see section 40(2)(a) of the Act). Put another way, not only must claims be supported by the specification, the specification must be capable of being understood by a person skilled in the relevant art.
The requirement for sufficient disclosure has been the subject of significant consideration by UK and Australian Courts. The standard arrived at by the UK Courts (and accepted in Australia) is to ask:
‘Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?’
Relevantly, this poses the questions:
- Is it plausible that the invention can be worked across the full scope of the invention?
- If so, can the invention be performed across the full scope of the claims without undue experimentation?
Given his Honour found that claim 1 was not supported by the specification, it followed that the specification also did not enable the invention claimed to be performed across its full scope, without undue experimentation.
Justice Burley made orders on 17 September 2021 allowing Nalco to file any application seeking leave to amend the Patent, by 20 September 2021. The Federal Court’s records show that an application was filed on that date, and so it remains to be seen whether Nalco will be able to amend the Patent in a way which will overcome the matters identified by Justice Burley.
 1 Cytec Industries Inc. v Nalco Company  FCA 970 at .
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