Failure to Deliver!!!


A recent Canadian decision has invalidated most of the claims of a patent for failure to meet the lack of utility. This decision may give some guidance to applicants in Australia under the proposed amendments to be introduced when the “Raising the Bar” patent legislation is passed.

The Canadian IP Office (CIPO) is a member of the “Vancouver Group,” together with the UK and Australian Patent Offices who have agreed to cooperate in key aspects of patent prosecution. The aim is eliminate duplication of effort between the offices, by sharing information and relying on examinations performed by other offices within the group.

The group has agreed on several “mutual exploitation principles.” One of the principles of the Vancouver Group is that each Vancouver Group Office (VGO) will, where possible, rely on any patent granted by another VGO or on the search and examination performed by another VGO. A VGO may perform further search and examination if it deems further work necessary.

Therefore, the “utility” cases in Canada are likely to be scrutinised by the Australian Office when the new Australian legislation passes as to how to assess utility.

Australian law requires that an invention be “useful” but it is a rarely raised objection during examination. It is likely that once the Australian Raising the Bar” patent legislation is passed, it will become a more well used ground for rejection.

In the Canadian decision of the Federal Court (the Court) in Eurocopter v. Bell Helicopter Textron Canada, the Court examined the patent to determine whether the promised utility was either demonstrated or reasonably predicted as of the filing date of the patent. With regard to the latter, the Court reiterated the test for supporting a reasonable prediction, namely, that:

  • there must be a factual basis for the prediction;
  • there must be a sound line of reasoning for inferring the prediction from the factual basis; and
  • there must be proper disclosure in the patent.

The patent described the invention as an improvement over the prior art by providing a landing gear that offers at least three specific advantages. All these improvements were construed by the Court to form the “promise”, or promised utility of the invention.

The Court then found that the claims of the patent with one exception, did not deliver on all three advantages and therefore, failed to deliver on the promise. These claims were ruled invalid.

Interestingly, the only claim which was not invalidation on utility grounds was found to be valid and infringed.

It will be interesting to see how the Australian law develops in this area with the passage of the new Act.

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