Promises in a specification – useful or not?

A recent decision of the Federal Court of Australia has raised a warning flag regarding over-promising advantages of the invention in a complete specification.

Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 was an appeal from a decision of the Commissioner of Patents under the pre-Raising the Bar provisions of the Australian Patents Act 1990.

Section 18(1)(c) of the Patents Act 1990 requires that an invention as claimed be “useful”. This provision is commonly referred to as ‘utility’. In order to have utility, the claimed invention must meet the promise made in the specification. If a claim includes an embodiment which does not meet this promise, then that claim is invalid for ‘inutility’.

In Ronneby Road,Jessup J held all claims of ESCO’s patent application invalid due to lack of utility, on the basis that the claimed invention did not meet all of the promises made in the summary of invention.

Jessup J considered that the question of utility could be effectively addressed by asking three questions framed by Beach J in Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340]:

“What has the patentee promised for the invention as described in the relevant claim? Is the promise useful? Has that promise been met?”

The invention related to an assembly for securing a wear member to excavating equipment to prevent wear. The relevant portion of the Summary of Invention which outlined the invention’s promises and/or advantages was:

“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.”

Jessup J then characterized Ronneby Road’s position:

“As will appear, it is fundamental to [Ronneby Road’s] argument that these advantages are expressed cumulatively, that is to say, the relevant promise was that they were all delivered by the invention in so far as claimed in every claim.”

The Court heard expert evidence, in which the experts determined that despite the fact that some claims fulfilled a number of the stated advantages, none of the claims met every advantage promised.

After reviewing a number UK and Australian authorities, which were balanced on the point, Jessup J considered himself bound by the decision in Pracdes Pty Ltd v Stanilite Electronics Pty Ltd (1995) 35 IPR 259 at 272-275 (Supreme Court of NSW) and came to the conclusion that each claim must satisfy each and every advantage stated in the specification in order to have utility. This meant that all of the claims of the Ronneby Road application were invalid for lack of utility.

As can be seen from Jessup J’s statement that the cumulative aspect was “fundamental to the applicant’s position”, and the balanced nature of the authorities cited, his finding turned on the cumulative nature of the statement from the summary of invention. It remains questionable whether the decision would be applicable in an instance where such advantages or promises were stated in the alternative rather than cumulatively.

However, whether or not this decision would be applied when stating advantages in the alternative, the decision serves as an important reminder regarding the care needed in drafting each and every part of the specification.

It is worth noting that the case was decided under the provisions in force prior to the implementation of Intellectual Property Laws Amendment (Raising the Bar) Act 2012. Following ‘Raising the Bar’, for a claimed invention to be useful, it must also have a specific, substantial and credible use as defined in section 7A of the Patents Act 1990, as well as meeting each of the promises made in the specification.

Patent specifications, particularly those drafted in the US and Europe, often include object clauses setting out the advantages or promises of the invention. Multiple advantages may be listed, with different embodiments potentially having different advantages.

Where a specification promises more than each and every claim can deliver, it may be possible to amend the specification by requesting amendment under section 104 in order remove a lawful ground of objection. The specification could be amended to remove some of the promises or stated advantages of the invention so that each of the claims meet all of the promises made in the specification.

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