Disclosure of the best method – how much is enough?

The Institute of Patent and Trade Mark Attorneys of Australia Conference 2025 - Brisbane

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Introduction

1. Section 40(2)(aa) of the Patents Act1990 (Cth) requires that a complete specification “disclose the best method known to the applicant of performing the invention”. This requirement, in similar terms, was contained in section 40(2)(a) of the Act prior to the Raising the Bar amendments, and so we see that some of the cases refer to that earlier section. The change in wording and section number was not intended to modify the law.
2. As to why I chose this topic for today’s presentation, the short answer is – it is increasingly being relied upon as a ground of attack on the validity of patents. Litigants are attempting to stretch its boundaries as far as they can, or at least seek to test where the boundaries of this ground lie.
3. For this reason, I thought it would be helpful to address the best method requirement, paying particular attention to the issues which might arise when drafting patent applications but also for those who are contemplating advancing this ground of attack on the validity of a patent.

Elements of the best method requirement

4. There are three elements to the best method requirement:

(1) Best method;

(2) Known to the applicant;

(3) Of performing the invention.

5. All of these elements are important. Sometimes in litigation, a challenger to the validity of a patent (I will call them that for convenience) will focus upon one or perhaps two of these three elements but not the third. In particular, a challenger will focus upon what it says is the best method of performing the invention but pay scant attention to the evidence required to prove that the best method was known to the applicant. More on this shortly.
6. Whether at the drafting stage or the litigation phase, there are a number of questions to ask which are derived from the authorities. However, to be clear, whether the best method requirement has been met is a question of fact in each case, and the questions I will address provide guidance to finding the answer to the question of compliance with section 40(2)(aa).

Identifying the invention

7. The first question to ask is, what is the invention (being the embodiment which is described and around which the claims are drawn)?
8. This is perhaps the most critical question, and it is the one in relation to which many challengers come undone. Although this is the third element, it is the element around which everything else pivots.
9. See, for example, the recent decision of Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc (2024) 306 FCR 19; [2024] FCAFC 145 at [14]:

Whilst the word ‘invention’ may bear various meanings in the Act, it is clear that in s 40(2)(aa) it refers to the embodiment which is described and around which the claims are drawn. For the purposes of determining whether the best method of performing the invention has been disclosed, it is necessary to consider both the description of the invention and the claims.

10. Clarity in the drafting of the description of the invention in the specification and in the claims themselves is therefore very important. In particular, loose language in the words used in the description can affect the answer to this question in a way which might expose the patent to a stronger best method attack. Further, to avoid later arguments about ambiguity, you should consider inserting definitions into the application.

The nature of the invention

11. What is the nature of the invention? This is to be discerned from the invention as described in the whole of the specification. See, for example, Zoetis at [15], and the cases cited therein.
12. What can occur in patent trials is that the challenger will focus upon particular aspects of the specification and then seek to characterise the invention by reference to that extract, which is the wrong approach. For example, in SARB Management Group Pty Ltd (t/as Database Consultants Australia) v Vehicle Monitoring Systems Pty Ltd (2024) 176 IPR 391; [2024] FCAFC 6, the challenger sought to summarise the invention by reference to consistory clauses rather than the whole of the specification. The Full Court rejected that approach: see [122]. However, those who draft specifications should be aware that this is what is occurring, and be conscious of this when drafting the application.
13. As the case law on best method has developed and with respect, it might be said that if the case of Firebelt Pty Ltd v Brambles Australia Ltd (2000) 51 IPR 531; [2000] FCA 1689 came before the Federal Court today, it would be decided differently. As Firebelt is often cited by parties and judges in patent cases, it is worth exploring this today.
14. The decision of Firebelt was handed down in November 2000 and so is more than 24 years old. Its correctness has never been the subject of a challenge by any party.
15. The relevant facts of Firebelt were summarised by the Full Court in Zoetis as follows:

[19] … The patent was for an automatic side loading refuse vehicle. The trial judge attached both the claims and a breakdown of their integers as Annexure 1 and 2 to his Honour’s reasons (Firebelt Pty Ltd v Brambles Australia Ltd (1998) 43 IPR 83) as follows:

ANNEXURE 1

1. … the loading mechanism having a lid opening device …

ANNEXURE 2

…

(f) the loading mechanism having a lid opening device …

…

[20] It will be seen from (f) of Annexure 2 that claim 1 included a claim to a lid opening device. As with the method of classical salification in Servier and the water sealing mechanism in Sandvik, the specification did not disclose any particular lid opening device and left it to the addressee to provide one. There was evidence before the trial judge from the inventor that ‘the system would not work at all without the lid opening device as specified’ which the trial judge accepted: Firebelt Pty Ltd v Brambles Australia Ltd (1998) 43 IPR 83 at 87 per Dowsett J. The Full Court concluded at 544 [52] that the disclosure obligation was not enlivened:

The invention claimed is not of a particular type of lid opening device operating at any particular time. There is therefore no statutory obligation to describe which of the contemplated lid opening devices was considered to be the best, nor the preferred timing, contrary to his Honour’s understanding of the section.

16. Pausing there, the Full Court in [52] of Firebelt said this:

The invention claimed is not of a particular type of lid opening device operating at any particular time. There is therefore no statutory obligation to describe which of the contemplated lid opening devices was considered to be the best, nor the preferred timing, contrary to his Honour's understanding of the section.

17. In Zoetis, the Full Court said this at [25]:

The Full Court’s reasons at [52] in Firebelt focus on the form of the claims. With respect to their Honours, if they are to be taken as saying the form of the claims is determinative, we do not agree. The fact that none of the claims in that case was to a lid opening device operating at any particular time could not of itself be an answer to the best method challenge if the timing of such operations was advantageous to the working of the combination or the quality of the outcomes achieved from its use. In deciding whether the best method has been disclosed it is necessary to look at the invention disclosed in the specification as a whole, not merely the claims: Sandvik at 463–464 [125]–[126].

18. While we are on the decision of Firebelt, there is another aspect of that decision which deserves mention.
19. In Firebelt at [48] (for example), the Court referred to the principles of good faith on the part of the patentee. The notion of good faith has also started to find its way into arguments advanced by challengers (that is, advancing jury points in an attempt to paint the patentee as wearing a black hat and deliberately withholding information). Such an approach is a waste of energy and time. As the Full Court observed in Zoetis at [89] and [90]:

[89] The second error is said to lie in thinking that there was an obligation of good faith that could extend to the manner in which Zoetis conducted its defence. Section 40(2)(aa) does not refer to good faith. Nevertheless, it has been said, most recently by the Full Court of this Court, that ‘principles of good faith underlie the best method requirement’: Servier at 89 [108]. We would prefer to focus on the language of s 40(2)(aa) which does not mention good faith. Introducing a concept as one which ‘underlies’ a statutory provision is apt to replace the words which appear on the page with words which do not. Across multiple fields of law, experience shows that this is unwise.

[90] Whilst it is not to be doubted that historically good faith on the patent applicant’s part explains why the best method known to the patent applicant needs to be disclosed, it does not seem to assist analytically in any particular case. The best method known to the patent applicant is either disclosed or it is not disclosed. If it is disclosed, then bad faith on the part of the patent applicant is irrelevant. If it is not disclosed, then its good faith is likewise irrelevant. Put another way, debating the bona fides of the patent applicant is incapable of bearing upon the question the statute poses.

(Emphasis added.)

The promise of the invention

20. Another question to ask is, what is the promise or nature of the invention as described in the whole of the specification? For example, does the specification claim that the invention has any advantages?
21. These are convenient questions to assist with the analysis of identifying the invention; however, the answers to these questions do not provide a hard and fast answer. The specification may claim that the invention has a number of advantages over the prior art. However, it does not necessarily follow that the invention must be characterised by reference to that advantage.
22. Having said that, care must be taken when drafting the specification to not over sell or overstate the advantages of the invention as such statements will be taken into account, and might mean that the invention is identified by reference to that advantage. So the question must always be asked – is it necessary to refer to that advantage in the patent application? Why?

What information constitutes the best method?

The information in question

23. What is the information in question?
24. For the patent attorney, this question requires you to consider whatever it is that you are proposing to omit. For the challenger, this question requires you to identify the information which you say ought to have been included in the specification but was not (and as an aside, this should be done in clear terms by way of proper particulars to an allegation that the best method requirement has not been met).
25. Once you have identified the information, ask – is that information required to perform the invention? And is it the best method of performing it? Why?
26. As to the first question, the Full Court in Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61; [2016] FCAFC 27 stated:

[123] Section 40(2)(a) requires that the best method of performing the invention be provided. Perform is relevantly defined in the Macquarie Dictionary to include: ‘to carry out; execute, do’; and ‘to carry into effect; fulfil’. The meanings of “perform” in the Shorter Oxford English Dictionary are relevantly ‘execute, accomplish, do, (any action, operation or process undertaken or ordered)’ and ‘make or construct (an object)’.

[124] The key to understanding the obligation of the patentee is to understand that the section is directed to the method of performance of the invention. The monopoly is circumscribed by the claims but the nature of the invention is as described in the whole of the specification. This approach accords with that adopted by Lord Nicholls in Van Der Lely and by the Full Court in Firebelt.

[125] Section 40(2)(a) expressly uses the word “method”. Method is relevantly defined in the Macquarie Dictionary as: ‘a mode of procedure’ and ‘a way of doing something’.

(Emphasis in original.)

Materiality of the information

27. Once you have identified the information in question, ask: how material or important is the information to the advantages it is claimed the invention brings? Does the information relate to a real issue that needs to be overcome?
28. The first of these questions relates to the materiality or importance of the information to the advantages it is claimed that the invention brings. The second of these questions asks whether the information relates to a real issue which needs to be overcome (that is, to reproduce the invention)?
29. See, for example, the discussion in Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd(2017) 126 IPR 427; [2017] FCAFC 138 at [125]–[126].
30. As a general observation, the more critical or necessary the information is to reproducing the invention and obtaining the claimed advantages, the more likely it is that the information should be included. This was emphasised by the Full Court in GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd (2018) 264 FCR 474; [2018] FCAFC 71 at [192] and [194].
31. By contrast, the patentee’s internal decisions concerning a commercial embodiment of the invention may not relate to information which is necessary to obtain the full benefit of the invention. For example, a patentee may choose to commercialise its invention of a pharmaceutical composition, and may decide that, for its own purposes, its commercial product will have certain ingredients (such as water) or certain dosage frequencies (such as twice daily). Such choices relating to the commercial product may be immaterial to the claimed invention, and it does not follow that such choices show that the patentee knew of a better method of performing the invention.

Utility of the information

32. Does the information take the methodology to a more satisfactory stage or provide more certainty so that the public may more quickly and easily utilise the invention for which a monopoly is granted?
33. This is another question which has been asked, in this case by the Full Court in Servier at [64] as follows:

The proposition underlying a separate and additional obligation on the part of the inventor filing a complete specification is that where an inventor in fact knows of a method at the time of filing the complete patent application, which has taken the methodology to a more satisfactory stage or provides more certainty so that the public may more quickly and easily utilise the invention for which a monopoly is granted, the inventor is under an obligation to disclose that method.

Common general knowledge

34. Is the information common general knowledge? What is the burden on the person skilled in the art arising from the non-disclosure of the information?
35. These two questions are linked. It is convenient to return to the facts in Firebelt and the discussion in Zoetis about that case.
36. It will be recalled that one of the integers of claim 1 of the patent in Firebelt was “the loading mechanism having a lid opening device”: Zoetis at [19]. The specification did not disclose any particular lid opening device and there was evidence before the trial judge that the “system would not work at all without the lid opening device as specified” which the trial judge accepted: see Zoetis at [20]. However, the Full Court concluded that the disclosure obligation was not enlivened.
37. The Court in Zoetis at [21] stated this about the conclusion reached in Firebelt:

This conclusion is difficult to reconcile with the outcomes in Servier and Sandvik. The advantage claimed for the invention would not obtain without the lid opening device and the person skilled in the art would need to spend time developing a lid opening mechanism to achieve the promise of the invention (since the system would not work without it). In that sense, the non-disclosed method was material to the advantages it was claimed the invention conferred…

38. And at [29], the Court cited GlaxoSmithKline with approval, stating that:

The Full Court went on to consider whether it was open to a patent applicant to withhold information on the basis that it could be obtained by routine experimentation. We agree with the following observations of the Full Court at 513 [191]–[192]:

We do not think the patent applicant is entitled to withhold information that is necessary to enable the skilled addressee to perform the invention in accordance with the best method merely because the skilled addressee could ascertain such information by routine experiment. There is a great deal of experimentation performed in the field of drug development and formulation which, although routine and not requiring the application of any ingenuity, may be, time consuming and expensive. For the patent applicant to withhold information which it knows is necessary to perform the invention in accordance with the best method merely because the information could be obtained by routine experimentation is in our view inconsistent with what Fletcher Moulton LJ described [in Vidal Dyes Syndicate Ltd v Levinstein Ltd (1912) 24 RPC 295 at 269] as the settled law that required the patentee to give the best information in its power as to how to carry out the invention.

Whether or not it will be open to the patent applicant to not disclose relevant information on the basis that it is available to the skilled addressee by routine experimentation will depend on the importance of the information in question, the practicality of disclosing it, and the extent of the burden imposed on the skilled addressee who is left to rely upon routine experimentation. That question is, as we have already mentioned, to be addressed in a practical and common sense manner.

Dead ends and false starts

39. Would the disclosure of the information save the person skilled in the art the possible dead ends and false starts (or difficulties and uncertainties) that otherwise would have been risked?
40. Similarly, does the omission of the information leave the person skilled in the art at risk of failure? Is it information which would have been discovered by routine experimentation by the PSA?
41. Again, these are relevant questions but as already observed, the issue of whether the information could be discovered by routine experimentation is relevant but not decisive, and it depends on a number of factors: see GlaxoSmithKline at [191]–[192]; Zoetis at [29].

Undue experimentation

42. What are the qualifications, knowledge and capabilities attributed to the person skilled in the art, and is the required experimentation time-consuming and expensive?
43. What constitutes undue experimentation in the context of the best method requirement will depend on the circumstances, including the qualifications, knowledge and capabilities attributed to the notional skilled addressee: GlaxoSmithKline at [190].
44. Further, if experimentation is time consuming and expensive such that it is burdensome, that may be enough even if it could also be described as “routine”: GlaxoSmithKline at [191]:

There is a great deal of experimentation performed in the field of drug development and formulation which, although routine and not requiring the application of any ingenuity, may be, time consuming and expensive.

Practicality of disclosure

45. What is the practicality of disclosing the information? What is the burden imposed on the patent applicant by requiring its disclosure?
46. This question presents the flip side of the analysis. For example, is it practical to disclose that a method of performing the invention is to use a particular transceiver which has certain features when other transceivers could be regarded as being better depending upon subjective choices such as cost, longevity and availability?
47. Is it burdensome to require the patent applicant to disclose confidential details of its commercial embodiment by reference to features which are not part of the claimed invention?
48. Alternatively, if the information could be disclosed with ease, then that might point to it needing to be disclosed.

Knowledge of the best method

49. Is the information required to perform or carry out the invention in the best manner known to the patent applicant?
50. It is not the case that the patent applicant must devise the best method of performing the invention before applying for a patent; however, a patent attorney must explore with the patent applicant the extent of the information known to the applicant relating to the best manner of performing or carrying out the invention. Conscious that such interactions might come to light through discovery in litigation, such exploration might be better performed in a face to face meeting.
51. From the challenger’s perspective, proving knowledge (especially of a corporate applicant) is not necessarily a straightforward task. You should assume that the patent applicant will never call witnesses at trial who could attest to the state of its knowledge. This may leave the challenger with nothing more than internal documents to seek to prove its case.
52. To be blunt, the fact that something is referred to in an internal document of a company may not be enough to establish corporate knowledge within the meaning of section 40(2)(aa).
53. This is something which not only needs to be considered by the challenger as part of considering whether to advance a best method challenge, but also needs to be addressed by it at trial. To give a simple example, assume that a part-time receptionist employed by the corporate applicant knew about the best method – would that be enough? What about a director who had no involvement with the patent application?
54. The issue of corporate knowledge in this context was considered in Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd (2018) 135 IPR 403; [2018] FCA 1573.
55. At [243] in Dometic, White J stated that:

… the attribution of knowledge of a person to a company depends on whether the person is “so closely and relevantly connected” with the company that his or her state of mind can be treated as the state of mind of the company. … such a person need not be an officer or employee of the company …

56. It was argued by the challenger in Dometic that the patent applicant knew of the best method, because it had the files of the inventor and the files of the patent attorneys under its control, which referred to the best method of performing the invention.
57. However, it was stated in Dometic at [256]:

… although there may be some circumstance in which a person’s control of a means of access to information may be equated with knowledge of the information (see, for example, Hammer Waste at [56]), there is no general principle to that effect. Control of a source of knowledge cannot be equated with knowledge of the information contained in that source. One’s possession of an encyclopaedia does not mean that one knows the content of the encyclopaedia. …

58. In the circumstances, White J considered that the discovered inventors’ documents were inadequate to establish that the patent applicant had knowledge of the best method, there was no evidence of the patent attorneys’ files, and there was no individual whose knowledge was regarded as the knowledge of the patent applicant:

[257] … [the documents] did not include any accompanying description of the design, let alone an explanation concerning the requirement for the upper and lower surfaces of the outlets to be complimentary. The two pages were a limited source of information only and, in my view, insufficient to indicate to the reader that the particular profile of the outlets had any significance in the performance of the airconditioning system. I consider that they would have been inadequate to convey to Dometic Sweden knowledge of the best method of performing the invention.

[258] The third difficulty is that files of Collison & Co were not tendered. Dometic claimed privilege with respect to those files … the Court cannot make findings as to their content.

[259] … the Respondents did not identify any individual whose knowledge was, in accordance with the principles set out earlier, to be regarded as the knowledge of Dometic Sweden.

59. It is apparent that the question of knowledge is a factual one, turning on all of the circumstances including the nature of the information in question (including the type and content), the identity of the persons who have access to the information and their role in the corporate structure.
60. Further, as knowledge is an element of section 40(2)(aa), the facts relied upon to allege such knowledge must be provided in the pleading, at least by way of particulars.

Disclosing the best method

61. Does the patent applicant know the embodiment to be the “best” embodiment of the invention (being a method which is better than the method described in the specification?) If so, include it in the patent application. It is trite that the specification does not need to state that the method is the best method, but it does need to state it.
62. As to what should be disclosed, the Full Court in Sandvik said this at [114]–[115]:

[114] As noted above, the Full Court in Servier referred to Bodkin C, Patent Law in Australia (2^nd ed, Thomson Reuters, 2014) at [5270] and [5280]. The learned author also gave the following description of what must be disclosed in the specification to satisfy the requirement to describe the best method of performing the invention at [5280] (which it is helpful to set out in full):

What must be disclosed is the best practical means of carrying out the invention, as distinct from the best means in theory. Commercial value or profitability is not of itself a relevant criterion for determining what is “best”: what is required is disclosure of the most effective means of carrying out the invention known to the patentee at the relevant time. Thus, where the invention is an apparatus, the description of the best method should include a description of any optional features that are required to make it work in the best way known at the relevant time. It appears that it is not necessary, however, to describe the best method for making the apparatus, or the best method of using it. Where the invention is a method or process, any optional steps or other details necessary for it to produce the best results must be described.

(Footnotes omitted; emphasis in original.)

[115] For present purposes, the following key principles may be stated on the basis of the authorities set out above:

…

(c) The nature and extent of the disclosure required to satisfy the best method requirement will depend on the nature of the invention itself: Firebelt at [52]-[53]; Servier at [108].

(d) ...

(e) The requirement to describe the best method of performing the invention is ordinarily satisfied by including in the specification a detailed description of one or more preferred embodiments of the invention: Firebelt at [53]; Servier at [104]. See also Blanco White (5th ed) at [4-516]; Bodkin C, Patent Law in Australia (2nd ed, Thomson Reuters, 2014) at [5280].

63. The final observation is to emphasise that whether there has been a failure to make the required disclosure is a question of fact which turns on the answers to the questions addressed today and is to be addressed in a practical and common-sense manner.