Case: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274
Outcome: applied
40(3) of the Act provides that the claims defining the invention must be fairly based on the matter described in the specification. This requires that there be a real and reasonably clear disclosure in the body of the specification of what is then claimed so that the alleged invention as claimed is broadly described in the body of the specification: Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 ; (2004) 217 CLR 274 ( Lockwood ) at [69]. A lack of fair basis is a ground of invalidity independent and distinct from the others and its determination is a matter of construction for the court: Lockwood at [46]-[48]. Sigma contends that for fair basis purposes it is appropriate to consider the body of the specification prior to its amendment, because any claim supported by material added by the amendment will, because of s 114(1) of the Act, have a later priority date and therefore lack novelty. On this basis Sigma asserts that claims 1 to 17 and 27 are not fairly based on the matter described in the specification insofar as any of them claim the use of a formulation of venlafaxine hydrochloride which does not consist of a spheroid core containing microcrystalline cellulose and HPMC together with venlafaxine coated with an ethyl cellulose and HPMC mixture. For the reasons set out at [21] to [26] I do not accept that fair basis is to be determined by reference to the specification prior to its amendment. In Lockwood 217 CLR at [68]-[69] the High Court said: Erroneous principles . The comparison which s 40(3) calls for is not analogous to that between a claim and an alleged anticipation or infringement. It is wrong to employ "an over meticulous verbal analysis" ... It is wrong to seek to isolate in the body of the specification "essential integer" or "essential feature" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question ... " Real and reasonably clear disclosure ". Section 40(3) requires, in Fullagar J's words, "a real and reasonably clear disclosure"... But those words, when used in connection with s 40(3) , do not limit disclosures to preferred embodiments. As was said in Lockwood 217 CLR at [69], the words "real and reasonably clear disclosure" do not limit disclosures to preferred embodiments, or I would add examples. The spheroid core example is just that. Sigma's contention cannot be accepted when the specification is read as a whole. The invention is not limited to the example. It relates to a method of treating patients using a single daily dosing formulation of venlafaxine hydrochloride that provides a peak blood plasma concentration of venlafaxine within a defined period or at a defined level. Under the heading "Brief Description of the Invention" there are consistory style statements, three of which are set out at [10] and [12], that reflect various embodiments of the invention. These provide a description of the invention later claimed. See in particular claims 4 and 9. Nothing in the body of the specification suggests that the description of the invention it contains is wider than the invention claimed. The spheroid example is an example of one embodiment later reflected in a claim upon which Wyeth does not presently rely. See page 4B, lines 17 to 34, page 4C, line 1 and claims 18 and 19. The examples given at page 5 of the specification all deal with coated spheroids and are examples of the formulations referred to at page 4D, lines 5 to 16. For the foregoing reasons, I do not consider Sigma has a prima facie case for invalidity on fair basis. Novelty