The Australian Patent Office's decision in
The University of British Columbia [2020] APO 15 (20 March
2020) considers how the "raised bar" requirements of
support (section 40(3)), enablement (section 40(2)(a)) and best
method (section 40(2)(aa)) are to be assessed. The decision is a
reminder that these requirements are now more onerous than they
were previously in Australia, and (with respect to the 'best
method' requirement) in other major jurisdictions. When
drafting specifications intended for prosecution in Australia,
especially in biotechnology and pharmaceutical areas which are
often struck by unpredictability, inventors should provide, and
attorneys must include, not only as much detail as possible on the
experimental methods for producing, evaluating and testing but also
the best method known to perform the claimed
invention.
