Patent Storms in Australia Around Lack of Support

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Summary

Whilst the recent NOCO case contains the significant practice point that best mode is measured from the PCT filing date, it also highlights that Australian patent claims are extremely vulnerable before the courts to a lack of support attack.

Detailed Description

The Australian Patent Office receives about 30,000 applications each year, with about 92% coming from overseas applicants and over 40% coming from the United States alone. About 2/3 of AU applications are filed via PCT applications. Whilst most cases proceed through the office and lead a quite life, a minor percentage end up before the courts.

One such PCT application was PCT/US2014/045434 entitled: “Portable Vehicle Battery Jump Start Apparatus with Safety Protection”, filed by the NOCO company. Their website (no.co) reveals NOCO is an Ohio based company founded 110 years ago by Joseph Nook, and has been active in battery technology ever since. The inventors on PCT/US2014/045434 (the Jump Starter Patent) include Joseph's descendants Jonathan and William Nook, and the family company has flourished with involvement in the jump starting battery business worldwide.

Brown and Watson International Pty Ltd (BWI) is an Australian company also active in battery technologies and founded 70 years ago in 1953 on the outskirts of Melbourne.

The two companies are significant players in the same battery jump starter market, and have recently clashed before the Patent Courts (NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887).

The 2014 Jump Starter Patent relates to the useful idea of having a system which checks the jump starter cables are connected properly before activating a surge battery to assist in getting supplemental power on demand. It sounds like a great safety idea, useful when you have a flat battery on a dark and stormy night and are getting nervous about connecting the jumper cables correctly before turning the switch! Was that “red to red” & “black to black” again? Reading the patent, it looks like a useful safety idea.

The NOCO v. BWI corresponding patent battle has played out in Australia over the last 5 years. Initially, BWI opposed the patents in the patent office and was unsuccessful. After grant, NOCO sued for infringement and BWI counter claimed on various grounds of invalidity. In the latest decision, BWI has prevailed, with the judge finding the relevant patent claims invalid.

For patent practitioners, the most significant legal point is the judge refusing to follow the prior decision of Dometic (Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573; 135 IPR 403) and holding that the date for the best mode requirement is the date of the PCT Application. The Australian best mode requirement was previously often utilised to allow defendants to invalidate patents where a better mode was discovered after the original PCT filing date. One can imagine the headaches if it is necessary to make sure all of the 30,000 applications each year were up to date with advances that were not part of the initial PCT filing (whilst also navigating any bans on not adding matter to the specification!).

The judge also found the granted patents obvious under Australian law on the bases of a number of prior art documents. The Australian obviousness position being similar to the European position. This seemed reasonable given the reviewed prior art.

However, more concerning about the case and perhaps overlooked, is the Judge following a line of law particular to Australia, which found the claims reaching beyond the scope of the original disclosure.

Whilst the idea behind the patent appeared to be the detection of correct polarity of interconnection of the jumper leads, the preferred embodiment described one arrangement with cascading field effect transistors (FETs) as the form of the power switching arrangement. Unfortunately, the court found that the applicant use of the term “power switch” in the claim was much broader than a FET, and that the claims were therefore invalid.

His Honour found (at [215]) that:

it is not sufficient for the priority document to provide a starting point from which the person skilled in the art may transition from one invention to another by use of the common general knowledge; the mere fact that it would be obvious to the person skilled in the art to use the disclosure in the priority document to produce what is claimed is not enough to obtain priority if, properly characterised, the priority document and the claim are for different inventions: ToolGen at [193]; Miele at [304];

The court also found that that a disparity between the number of sensors between the priority document and claims was also fatal to the invention claims.

His honour also stated that it did not matter that the generalisation was mere common general knowledge of the skilled artisan.

Whilst Patentees normally accept when they have been gazumped by the prior art, it is no doubt more difficult to accept the patent loss on the basis of a generalisation of the specific use of the FET to a “Power Switch”.  This also suggests the draftsperson is bound to a specific use of terminology in the application, which is particularly problematic when we do not have a broad doctrine of equivalence like the United States. Unfortunately, our evolving doctrine of support, suggests that Australia is developing an extremely restrictive view of claim interpretation. This is particularly problematic given the lack of that doctrine of equivalence.

In the present case, it appears the Patentee would be forced to include the FETs in the claim, to the exclusion of some new switching technology (e.g. GaA  Bipolar Transistors), which would seem to not infringe the overall patent.

This is quite concerning, especially to the 92% of foreign applicants for patents in Australia.

Australian national phase entry specifications normally require a verbatim copy of the PCT/WIPO documentation, and are entered into Australia on this basis. It therefore may be important to amend the specification to include an extensive interpretative discussion directing the skilled reader on claim interpretation.

This has previously occurred in a number of other contexts in Australia. For example, prior art disclaimers and consistory clause disclaimers are regularly included in PCT specifications. Hopefully, the extra material will not amount to added matter, as it is merely pointing out what is obvious to the skilled artisan.

It is also likely beneficial to instruct the skilled reader that the specification includes other variants to the preferred embodiments that would be obvious to the person skilled in the art.

Unfortunately, this is likely to add significant overhead to the 30,000 applications filed per year in Australia with an indeterminate benefit. However, I suspect explaining the lack of support finding to the Patentee in this case will be difficult.

Peter Treloar

Treloar IP

www.treloarip.com