The decision provides long sought clarity in relation to the law of fair basis (a requirement under section 40(3) of the Patents Act 1990 (Cth) (Act)).

The appellant (Lockwood) was the proprietor of Australian Patent 702,534 (Patent) for key controlled latches. Claim 1 of the patent related to a latch assembly having the following features:

a casing
a latch bolt mounted on the casing so as to be movable relative thereto between an extended latching position and a retracted release position
a first actuator operable from an inner side of the assembly to cause movement of the latch bolt to said release position
locking means operable from said inner side of the assembly to adopt an active condition and thereby render said first actuator inoperable
second actuator operable from an outer side of the assembly to cause movement of the latch bolt to the release position, and
lock release means which is responsive to said operation of the second actuator so as to thereby render said locking means inactive.
It was common ground that features 1–5 in claim 1 were features of the prior art and introducing feature 6 was the key inventive concept in the patent.

In relation to feature 6, the specification included the following paragraph and then described one embodiment of the lock release means: 'The release means [of the lock] may take any suitable form, and one particular form will be hereinafter described. '[emphasis added].

The respondent (Doric) manufactured and sold several key-controlled latches which the appellant claimed infringed several claims of the patent.

Doric claimed that the patent was invalid on grounds including lack of fair basis of claims, other than those claims to the stated embodiment. 

Section 40(3) of the Act relevantly provides: 'The claim or claims must be … fairly based on the matter described in the specification.'

The trial judge Hely J held1,  among other things, that all claims, other than the claim that described the stated preferred embodiment of lock release means (claim 33), were not fairly based because the specification did not contain a real and reasonably clear disclosure of matters broader than the preferred embodiment.

Lockwood appealed on, among many issues the issue of fair basis.2 

The Full Court (Wilcox, Branson and Merkel JJ) unanimously dismissed the appeal and upheld the conclusion of the trial judge in relation to fair basis. The Full Court considered that its finding on fair basis disposed of the appeal and declined to make other findings.

Lockwood appealed to the High Court on the issue of fair basis.

The High Court noted that the broad statement of the invention in the patent in the present case extracted above exposed the patent to attack on the grounds of lack of novelty, obviousness, insufficiency of description, lack of clarity, inutility or that the invention did not constitute a manner of manufacture. However, argument regarding these grounds was not available to Doric in the appeal because these grounds had been either rejected or not argued before the primary judge or had not been decided by the Full Court.

The High Court indicated that many of Doric’s arguments tended towards grounds of invalidity other than fair basis, which were not open to Doric on this appeal. They noted that the consideration of whether there is a 'real and reasonably clear disclosure' did not limit disclosures to preferred embodiments, rather, the requirement that the claims be fairly based on the matter described in the specification is a requirement that they be fairly based on all matter in the specification that discusses the invention (including the alleged invention).

Accordingly, because the 'invention' disclosed in the specification was the combination of the 6 integers described in claim 1 (including any suitable lock release means) and not simply the preferred embodiment set out in claim 33, claim 1 (and the following claims) were fairly based on the matter disclosed in the specification.

In this decision, the High Court has emphasised that the 'invention' is not determined solely by reference to a patent’s consistory clause(s), but by reference to the body of the specification as a whole. The High Court therefore reaffirmed that mere coincidence of language between a claim and part of the body of the specification will not ensure fair basis, particularly when the specification read as a whole indicates the invention is different. However, where the body of the specification read as a whole places no limitation on the invention set out in the consistory clause(s), then the claims will be fairly based if they reflect the invention set out in that consistory clause.

Accordingly, this case highlights the need for patent attorneys and inventors, in drafting patent specifications, to be clear about the invention in contrast to what is merely a preferred embodiment. This distinction should be reflected in the claims.

The decision also emphasises that while the grounds of patent invalidity are related, the approach used in assessment of these grounds should be analytically distinct.