On 15 April 2013 the remaining schedules of the Raising the Bar Act will come into force. These schedules include some of the most significant amendments to the Australian Patents Act since the 1952 Patents Act was replaced with our 1990 Act.
One significant change to the Patents Act is the law relating to usefulness or utility. While our present Act requires a patentable invention to be useful, this is not a ground of examination, only a ground of opposition and revocation. At present, to meet the usefulness requirement at least one embodiment of the invention as claimed in a given claim must achieve the result promised.
After 15 April 2013, usefulness will be a ground of examination, opposition and revocation. The test for usefulness will also be expanded. In addition to meeting the present requirement, for an invention to be deemed useful there must be a specific, substantial and credible use for the invention (so far as claimed) disclosed in the complete specification. This disclosure must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.
It is intended that the “specific, substantial and credible use” requirement will be given the same meaning as is currently given by the US courts and the United States Patent and Trade Mark Office (USPTO). The Explanatory Memorandum which accompanied the Raising the Bar bill states:
“Currently, the US courts interpret the terms as follows:
- ‘specific’ means a use specific to the subject matter claimed and can ‘provide a well-defined and particular benefit to the public.’
- ‘substantial’ means the claimed invention does not require further research to identify or reasonably confirm a ‘real world use’. ‘An application must show that an invention is useful to the public as disclosed in its current form, not that it prove useful at some future date after further research’.
- an asserted use will be ‘credible’ ‘unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statements in the specification.’”
The United States Manual of Patent Examining Procedure states that deficiencies under the useful invention requirement will arise in one of two forms, as follows:
- Where it is not apparent why the invention is “useful”. This can occur when an applicant fails to identify any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention; or
- Where an assertion of specific and substantial utility for the invention made by an applicant is not credible (it appears that an example of this could be when the invention does not obey the laws of physics, such as in a “perpetual motion machine”).
At the time of drafting patent applications, care should be taken to make sure that the specification clearly outlines at least one specific, substantial and credible use so that the new usefulness requirement will be met.
Also, applicants for Australian patent applications should consider requesting examination prior to 15 April 2013. By taking this action, the application will be examined under the current more lenient provisions. In addition to usefulness, the Raising the Bar Act will introduce a host of other changes to the Patents Act on 15 April 2013, including to changes to the requirements of inventive step, fair basis and sufficiency.
Please don’t hesitate to contact us if you have any questions on the above.