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Federal Court drills down to “core” of patent to find essential features

Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178

The sufficiency requirement established under the Raising The Bar (RTB) amendments back in 2013 has now, for the first time, been the subject of an appellate-level decision of the Federal Court.

Background

Jusand Nominees Pty Ltd brought an assertion of infringement of their innovation patents by Rattlejack Innovations Pty Ltd, who had made and developed a product known as a SafetySpear, before the Court. Jusand’s patents related to a safety system for preventing a broken longhole drill rod from falling down the drill bore hole and injuring a person in the tunnels below. The claimed invention involved a plug-like product which was inserted into a bore hole containing a broken drill rod or rods (which could weigh many hundreds of kilograms) and was designed to operate in a manner that would arrest the fall of any drill rods that fell down.

Trial Decision & Appeal

At first instance, it was found that Jusand’s patents were invalid for failing to sufficiently describe the invention across its full scope.

In the decision of the Full Court authored by Perram J, which Nicholas Mcelwaine JJ joined, the trial judge’s findings were upheld. 

According to the law, the patentee must “disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art”. Perram J deemed the term “complete enough” to be vague enough so as to require reference to explanatory material. The Full Court extensively examines the leading UK sufficiency case, Regeneron Pharmaceuticals Ltd v Kymab Ltd [2020] UKSC 27, which establishes fundamental guiding principles regarding sufficiency and then further develops the considerations and principles in Regeneron. In particular, in emphasizing the concept of the “essence or core” of the invention, Perram J established that it is necessary to consider the following:

  1. The invention as claimed;
  2. The inventive/innovative step;
  3. The technical contribution to the art; and
  4. The context in which the invention is to be used.

Applying the above, the Court found:

  • The invention involved a Safety System employing steel anchor and impact reduction components.
  • The innovative step introduced the concept of converting downward weight into lateral braking forces in a specific manner.
  • The technical contribution involved the application of converting downward weight into lateral braking forces in a specific manner within a Safety System utilizing steel.
  • The context included considerations such as the specifications regarding bore hole depth, rod section length, and potential impact load, indicating that materials like “paper or glass” would be inadequate for the Safety System.


The Court deemed the range of materials for the Safety System as relevant to its essence, thereby requiring the specification to enable implementation across the full scope of the claim, including the range of materials. Thus, the Full Court upheld the trial judge’s ruling that the claim lacked sufficiency due to encompassing materials beyond steel that were not enabled by the specification.

What comes next?

An application for special leave to appeal to the High Court is currently pending so it remains to be seen whether this new test will stand or be overturned in the near future.

Nevertheless, it is important not to trivialize section 40 considerations in a post-RTB world. While novelty and inventive/innovative step are easily assessed during examination before the patent office, section 40 issues will often not become apparent until the patent is before a Court. Over-claiming where an inventor cannot show that they have invented across a wide range can be fatal to the entire patent. While the bounds of what has been invented may not always be readily apparent, either to the inventor or the patent attorney, when the specification is prepared, drafting a robust specification and set of claims that is focused on the essential features of the invention will mitigate many of the risks.

When drafting a patent specification, a skilled patent attorney will take into consideration whether the disclosure in the specification is sufficient for the skilled person to do everything being claimed.​ If not, further consideration will be given to either expanding the disclosure or claiming less. To discuss essential features of your invention and the best way to protect them in Australia, please don’t hesitate to contact our Patents team at MBIP.