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Date Published

Test for Allowability

A useful test for the allowability of amendments under sec 102(2)(a) is:

"would the amendment make anything an infringement which would not have been an infringement before the amendment?"

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.  Although the wording of sec 102(2)(a) differs from the wording of the then sec 31(1) of the British Act, the Commissioner in W.J. Voit Rubber Corp.'s Application (1965) AOJP 1752, when considering the corresponding provision of the Patents Act 1952, at page 1754 stated:

"the test as to whether a proposed amendment would have the effect of causing infringement when none existed before, seems to me a perfectly reasonable one".

The Federal Court accepted the continuing relevance of this approach in Boehringer Ingelheim International GmbH v Commissioner [2000] FCA 1918.

The Federal Court has recently considered this expression in the context of sec 70(2)(a). The Full Court stated:

“we think that falling within the scope of a claim in a patent specification means included among the things claimed”

Boehringer Ingelheim International GmbH v Commissioner (2001) 52 IPR 529 at [42].

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.

In AMP Incorporated v Commissioner of Patents (1974) AOJP 3224, the High Court stated at page 3227:

"The amending claim must in substance fall within the scope of the claims before amendment. The reference to substance imports the kind of test which is appropriate to a consideration of the question whether or not a particular act or a particular article is an infringement of the patent.

.....It would be of little avail to an alleged infringer to say that his article did not infringe one claim if it infringed another even though he may not in the infringement have incorporated all the features of that other claim."

Applying the Test

Examiners should note that this is not a test of comparing the text of the claims before amendment with the text of the claims after amendment.  The test requires consideration of the effective monopoly afforded by a claim.

It is important to distinguish the substance of the claims from the words used in it. For example, a claim may begin with the word "Apparatus" and yet be, in effect, a claim for a method. In such circumstances, substitution of a claim directed to a method may not only be unobjectionable, it may even be desirable. For the determination of allowability, the substance is much more important than the words.  In AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227, the High Court stated:

"an amendment may be allowed where it does no more than explain what is already in the claim when it is properly construed. It may be said that such an amendment is unnecessary because it adds nothing to the claim so construed. However, when it is borne in mind that the claim is intended to speak to the world, an amendment by way of explanation so that any misapprehension can be avoided may clearly be desirable."

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