A patent specification is NOT a sales document

A patent specification is NOT a sales document – 14 June 2016

A recent decision [1] of the Federal Court [2] provides guidance on the Australian patent utility requirement in the context of a mechanical invention. The decision demonstrates:

  • that the Australian utility requirement differs significantly to analogous requirements in other jurisdictions; and
  • the significance of the ‘minor’ amendments that experienced Australian patent attorneys routinely make to foreign-originating patent applications.

Under Australian law, it is important to avoid ‘over promising’ lest a patent application be held invalid. It is good practice to include ‘modest’ object statements. Foreign-originating patent specifications (e.g. those prepared to suit US requirements) are routinely modified in this regard. For example:

  • objects of the invention become objects of ‘at least a preferred embodiment of the invention’; and
  • it is commonplace to add to the end of an existing object statement something along the lines of ‘or at least provide an alternative in the marketplace’.

Typically these modifications would be made when filing a convention application or in response to the first examination report.

The Federal Court decision concerned a patent application originating in the US and which apparently proceeded without such routine amendments. The specification ‘sold’ the invention in following terms:

‘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’.

With the aid of expert testimony, this was construed as six distinct promises and the claims were held invalid because the claimed invention did not deliver all six promises:

‘It was submitted on behalf of the applicant [3] that all of the claims were bad for want of utility because none of them delivered on the promise made in the specification, namely, that the invention would bring all of the six named advantages’. [4]

After surveying the applicable authorities, the Court accepted this submission:

‘It follows that I would uphold the applicant’s utility objection in relation to all of the claims in the patent’. [5]

Our experienced Australian patent attorneys conscientiously review every patent application in our care and routinely propose minor amendments such as the moderation of any object clauses. Usually these minor amendments can be made at minimal cost, e.g. by filing them alongside substantive amendments in response to an examination report.

[1] Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588

[2] The Court of first instance for Australian patent matters

[3] That is, the applicant in the Court proceedings who is adverse to the patent applicant

[4] At paragraph 72

[5] At paragraph 78

Authored by

Ben Mott Patent Attorney & Mechanical Engineer Ben Mott

Mechanical Engineer & Patent Attorney