Beware of Making Promises: Patent Drafting Tips for Australia

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The Federal Court of Australia in Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 recently found all claims of an Australian patent application to be invalid on the ground of lack of utility as the claimed invention did not deliver all of the promised results.

This was despite the finding that the invention did achieve some of the stated advantages and was generally of benefit to the user.

The Issue

The patent application (no. 2011201135) related to removable “teeth” for excavation equipment. The Summary of Invention section of the specification included the following sentence:

“The present invention pertains to an improved wear assembly for securing wear members to excavating equipment for enhanced stability, strength, durability, penetration, safety, and ease of replacement.”

Due to the presence of the word “and” in the above sentence, the Court held that the claimed invention must provide all of the stated advantages.  Expert evidence in the trial indicated that all aspects of the invention would need to be combined together to provide all the advantages above; none of the individual claims defined an invention which would provide all of the advantages.

The Law in Australia and its Application

Section 18(1)(c) of the Australian Patents Act requires a patentable invention to be useful.

According to Australian authorities (see, for example, In Artcraft Urban Group Pty Ltd v Streetworx Pty Ltd [2016] FCAFC 29), questions to be answered in deciding whether this requirement has been met include:

  1. What is the promise of the invention derived from the whole of the specification
  2. By following the teaching of the specification, does the invention, as claimed in the patent, attain the result promised for it by the patentee? (Note that to meet the useful requirement, “everything” that is within the scope of a claim must attain the result promised for the invention by the patentee).

In Ronneby Road, the Court also considered whether an invention must provide all of the stated advantages to be considered useful under the Patents Act, or if an invention is nevertheless ‘useful’ if it in fact provides some benefit. The Court held that the invention must provide all of the stated advantages. As it was found that none of the claims defined an invention which provided all of the promised advantages, all claims were consequently found to lack utility.

The Law in Australia Post-Raising the Bar Act

It should be noted that the amendments made to the Australian Patents Act via the Raising the Bar Act amendments in 2013 did not apply to the application in the Ronneby Road case.

The Raising the Bar Act added section 7A to the Patents Act, which states that “an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification”.  The terms “specific”, “substantial” and “credible” are intended to be given the same meaning as is given by US Courts and the US Patent and Trademark Office.

Nevertheless, the Explanatory Memorandum accompanying the Raising the Bar Bill made clear that under the amended Act:

An invention must have both a specific, substantial and credible use that is disclosed in the patent specification and meet the requirements of the existing case law (broadly that the invention must achieve the promised benefit).

Consequently, it seems almost certain that the claims of application no. 2011201135 would also have been found to lack utility under the amended Patents Act.

Patent Drafting Suggestions

To avoid falling foul of the ‘utility’ requirement, patent drafters should bear the following in mind:

  1. An object, aim, advantage or other ‘promise’ of ‘the invention’ should not be stated unless the invention defined in all patent claims achieves that object, aim, advantage or ‘promise’.
  2. If multiple objects, aims, advantages or other ‘promises’ of the invention are recited, they should not be stated so as to be interpreted as being cumulative or collective, unless the invention defined in all patent claims achieves all of those objects, aims, advantages or ‘promises’.
  3. If objects, aims, advantages or other ‘promises’ only apply to specific embodiments of the invention, this should be made this clear. For example, language such as “In one embodiment of the invention, the device advantageously …”, or “The device as exemplified in the Detailed Description advantageously …” might be used.
  4. Take care if reciting specific objects, aims, or advantages. It may be more prudent to use a general object clause, such as ‘It is an aim of the invention to provide an improved …..’. If objects, aims, advantages or other ‘promises’ are recited, they should be indicated as being preferred or desirable, rather than stated as warranties, e.g. by using non-committal language such as ‘A preferred aim is to …’.
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