In a recently issued Federal court decision [Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366], Justice Beach has highlighted the importance of drafting a patent claim and patent specification which clearly indicates the expected functionality of an invention.
In this decision, Justice Beach considered patent claims directed to ‘A lighting assembly…’. The patent claim in question related to “A lighting assembly..” but did not include any explicit indication of the what the lighting assembly was for (or suitable for). Specifically, it was argued by the respondents that the independent claim directed to a lighting assembly is not a manner of manufacture under Section 18 of the Australian Patents Act because the patent claim failed to recite a working interrelationship or potential working interrelationship between the component integers of the claim.
Justice Beach held that in order to fulfil the desired result or object of a claimed invention, the integers of a patent claim must interact to produce “the working inter-relationship” or “potential working inter-relationship” requirement, and that the object or the desired result “is to be identified by reference to the specification as a whole, and in particular, the objects of the invention”. The patent specification included passages which referred to easier, faster, safer and less frequent maintenance and servicing of the lighting assembly, the judge held that all integers of the claim interacted to achieve this result. The patent claim was therefore found to define patentable subject matter.
Therefore, it has been reaffirmed that Australian patent attorneys involved in drafting and prosecuting patents must pay particular attention to claim preambles and object statements in the patent specification because failure to do so may result in invalidity due to lack of patentable subject matter under the manner of manufacture requirements under Australian law.