Promises worth keeping: the Full Federal Court considers the test for utility in Australian patent law

What you need to know

• On 28 March 2018, the Full Court of the Federal Court of Australia (Full Court) reversed a decision of Justice Jessup, finding that a patent owned by ESCO Corporation (ESCO) (ESCO Patent) is valid and not lacking in utility or novelty. 
• The case provides an example of how courts will construe the patent specification and claims in order to determine the “promise of the patent” and decide if the claimed invention has utility. 

What you need to do

• When drafting patent specifications, patentees should take care not to overstate the practical utility of the claimed invention.  Courts will assess whether each claimed invention delivers the benefit(s) promised by the patent specification for that invention.

Background

The ESCO Patent (Australian Patent No. 2011201135) is for an invention that “pertains to an improved wear assembly for securing wear members to excavating equipment”.  In general terms, the invention relates to teeth which are attached to, and which protect, the bucket of an excavator.

Opposition proceedings

On 7 February 2013, Ronneby Road Pty Ltd (Ronneby) commenced opposition proceedings against the grant of the ESCO Patent.  A delegate of the Commissioner of Patents rejected all grounds of opposition, finding that the ESCO Patent met the requirements under the Patents Act 1990 (Cth) (Act).

Federal Court proceedings

On 26 February 2015, Ronneby appealed the delegate’s decision to the Federal Court on the grounds of lack of novelty, lack of fair basis and lack of utility.  The Primary Judge (Justice Jessup) found that the ESCO Patent was invalid on the basis that each claimed invention lacked novelty and utility. 
On appeal, the Full Court reversed the Primary Judge’s decision and found that the ESCO Patent was valid.  

Utility  

The parties’ contentions

Ronneby identified the promises of the invention as six stated enhancements to the equipment, being strength, stability, durability, penetration, safety and ease of replacement. Ronneby contended that each claimed invention lacked utility because it failed to satisfy all six promises, with some promises not being satisfied by any of the claims.

ESCO contended that the enhancements were not promises, but rather purposes of the invention.  Further, even if the enhancements were promises, ESCO contended it was not necessary for each claim to individually attain all of the six promises.

The findings of the Primary Judge 

The Primary Judge adopted Ronneby’s construction of the six enhancements as being one composite promise.  The central issue therefore became whether a patent that promises more than one result for a claimed invention must attain all of them.  The Primary Judge found that to be the case, and found that none of the claims fulfilled the composite promise. On this basis, all claims were found to lack utility. 

The findings of the Full Court

On appeal, the Full Court found that the six enhancements were not promises of the invention, or alternatively, if they were promises, then the six enhancements were to be read disjunctively and the claimed invention need not achieve all of them. 

The Full Court’s conclusion rested upon its construction of the patent specification, including the claims.  The Full Court stated that reading the six enhancements as either a composite promise or a set of promises which apply to all claims (as Ronneby contended) would bring about “discontinuity” and “asymmetry”, because the claims address two distinct things (being the wear member and the wear assembly).
The Full Court nevertheless expressed the view that if, properly construed, the promise of the patent specification is a composite promise, then a failure to obtain any one of the elements will render the claimed invention inutile.