Unlike many of its foreign counterparts, Australian patent law has a utility requirement. The utility requirement necessitates that the claimed subject-matter must have a ‘specific, substantial and credible use’ and it must also achieve the promise of the invention.
The Utility Requirement: Background
Although many patent specifications (particularly those drafted by foreign attorneys) contain an object clause to state the aims of the invention, the promise of the invention is not limited to the object clause. Rather, the promise of the invention is determined from the specification as a whole. As such, all embodiments falling within the scope of the claims must achieve the ‘promise of the invention’ and failure to do so can result in invalidity of the claim on a basis of lack of utility.
The issue of the utility requirement was discussed in a Federal Court case (Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651):
The primary utility consideration is whether the invention as claimed will achieve the result promised by the specification, the result itself being useful. However, it must be recognised that if the appropriately skilled addressee is able to supply an omitted feature, which is part of the common general knowledge, then provided the invention achieves the promise with that feature supplied, the claim will not lack utility.
As such, the claimed invention must satisfy all of the promises taught by the specification to satisfy the utility requirement.
Recent Case: CQMS v ESCO Group
In a recent decision (CQMS Pty Ltd v ESCO Group LLC [2024] APO 17), the claimed invention was found to be invalid for not satisfying the utility requirement. The patent application was directed towards systems and methods for monitoring the status, health and/or performance of wear parts that are used in earth working and excavating equipment. Claim 1 of the patent application was directed towards:
A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic sensor for producing an image, and secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information.
The Hearing Officer opined that the specification as a whole, related to several promises of the invention:
monitoring the health of the bucket by a monitoring system having an image sensor which detects the amount of wear in a wear part and which also detects when a wear part has detached;
protection of the bucket or improved performance via the supply of timely warnings to replace wear parts; and
protection of downstream equipment due to early detection of lost wear parts.
A key issue in the case in relation to utility was that the specification did not discuss the sensor mounting arrangement. In this regard, evidence was provided that it was not common general knowledge in the art to attach a sensor to the wall of an excavator bucket, and also the location and manner in which the sensor is attached was not part of the common general knowledge in the art. The Hearing Officer contended that the manner in which the sensor was protected from damage was an essential feature of the invention, which was required in order to fulfil the promise of the invention. The absence of such information resulted in the claimed invention being unable to fulfil the promise of the invention. As such, the claims were found invalid on the basis of a lack of utility.
Lessons on Utility for Drafting Strategy
From our experience, we have noticed that many object clauses utilise conjunctive language. In this regard, one strategy to alleviate the above utility issue is to delete the objects clause or to at least amend it to utilise disjunctive language.
This case demonstrates the importance of ensuring that the claimed invention satisfies the utility requirement. MBIP attorneys are experienced in reviewing and amending patent specifications to ameliorate the above issues. Please do not hesitate to contact us at MBIP for further information on matters relating to Australian patent law or if you require any assistance or have any questions.
