Utility is one of the requirements that must be met by a patent granted in Australia. Simply put, the invention claimed and described in a patent specification must be useful. Utility or usefulness is posed as a requirement because an inventor or Applicant cannot claim rights to something that is not useful to society, not practical or does not work[1].
In this article, Patent Attorneys, Dr Arun Nagasubramanian and Robert Wulff discuss the requirements that must be met to demonstrate utility.
Prior to 2013, the requirement for utility in Australia was not strictly enforced or required. For example, it was sufficient to show that there may be a use for an invention, but it was not necessary to describe in detail that use, or how the invention should be used, or to show that the invention was commercially useful. However, it was recognized that this approach was not clear and created difficulties, especially in the field of genetics[2].
As a result, researchers started applying for patents for isolated genetic materials that did not have a clear, immediate use. The genetic materials could potentially be used for many applications (e.g. identifying the presence of a various diseases) but further research was required to be done before such use could be confirmed or demonstrated. In other words, the invention was not really demonstrating an immediate benefit to society (although it is debatable that ‘any’ use is ‘some’ use).
Conversely, the monopoly granted to the isolated genetic material created difficulties for other researchers who wished to use that material for their own research purposes (e.g. trying to identify a cure for other diseases). The grant of a patent to such a broadly defined invention had the effect of stifling innovation thereby defeating the very purpose of the patent system.
In 2013, Australian patent law was amended to make the requirement for utility stricter ensuring that an invention disclosed in a patent specification has a specific, substantial and credible use[3]. These requirements were derived from leading judgements in the US[4]. Furthermore, an invention is also required to deliver the promised benefits[5] and we discuss these requirements below.
1. Specific use
A specific use is a use that provides a well-defined and particular benefit[6] to the public. Simply put, a patentee must be able to show what the invention is useful for. In other words, it is not possible to claim that the proposed invention may be used for something. The ‘may’ must be clear – either explicitly stated or implicit from a reading of the specification.
For example, let us assume that a materials researcher uses computational simulations to invent a new material by combining certain elements in ratios that have not been attempted before. The researcher must be able to demonstrate that the material can be used for a certain application, for example, in the construction industry or to fabricate corrosion resistant utensils etc.
In other words, a patent for a material that comprises a new combination of known elements is potentially susceptible to attack if it does not explain where or what the material can be used for. Generally speaking, in research, there is often a problem that is being addressed, so the application is self-explanatory, such that the requirement for specific use is often easily met.
2. Substantial use
A substantial use requires that the invention provide an immediate, real-world use and no further experimentation[7] should be required to prove the specific use claimed. Typically, if the requirement of specificity is not met then it is likely that the substantial requirement also won’t be met.
The key term to note here is ‘immediate’. ‘Immediate’ indicates that no further experimentation is required to confirm that use. Let us assume that the researcher using computational simulations to develop the new alloy composition has obtained certain properties for that alloy through the simulations and believes that the material may be useful in a specific industry, for example in construction. However, the researcher is unsure of such an application because they still believe that there are several challenges which need to be addressed before they can confirm such a use. Then, the requirement for an ‘immediate’ real-world use is likely not met because it is not yet proven that the alloy may be used in the manner envisioned by the researcher.
Before filing a patent application, the researcher may therefore need to gather more data, through experiments or further simulations, that demonstrates that the expected use is at least feasible.
Note: it is sufficient for the patent specification to show that there is at least a clear possibility of such use; it is not required to fully optimise the material before claiming such use. Again, generally speaking, in a research setup, it will be apparent if there is an immediate use.
3. Credible
A credible use requires that a person skilled in the art would consider the claimed invention as being logical given the state of the art[8]. Again, taking the above example of an alloy, other researchers in the field must be satisfied that such a combination of elements is indeed possible and would be able to meet the specific use claimed for the invention.
For example, if the inventor has claimed a combination of elements, say two materials, which when combined in the claimed ratios gives rise to a hard material that does not have any toughness, and thus cannot satisfy the functional requirement for the alloy to be put to the specific, substantial use envisioned, for example as a load-bearing member, then the requirement for credibility will likely not be met.
Other examples of inventions that are not credible include a claim to a time machine, or a vehicle that can travel faster than the speed of light, or cold fusion. These examples contravene the established laws of physics and will not be considered credible by a person skilled in the art.
4. Promised benefit
In addition to the above three requirements (i.e. specific, substantial and credible that are mandated by the patent legislation), Courts in Australia have held that for an invention to be considered useful it must deliver the ‘promised benefit’. Essentially, this means that the invention should deliver the advantages it has promised in the specification.
In Esco vs. Ronnenby Road[9], it was held that the invention defined in the claims did not deliver all six advantages disclosed in the patent specification. These were – enhanced strength, enhanced stability, enhanced durability, enhanced penetration, enhanced safety and enhanced ease of replacement. The invention concerned was an excavator tooth for use in an excavator. Because none of the teeth (defined as a wear member) defined in the claims provided all six advantages, the claims were held to be invalid.
What is required?
The best practice to address these requirements is to specify the use explicitly and provide as much detail and data as possible to enable someone who wants to recreate the invention, and apply it to such use, to be able to do so. Patent attorneys provided with background information from the inventor can typically point out if these requirements are met as part of the drafting process for the application.
Similarly, when drafting a patent application, it is necessary to capture the benefits of the invention in an appropriate way. It is critical to list only those benefits that you think can be demonstrated, preferably through quantifiable examples, by all embodiments with the scope of the patent.
Finally, a patent specification should be careful not to mandate a range of benefits to be enjoyed, as failure to meet just one such benefit, by any embodiment with the scope of the patent, can be fatal.
[1] Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011, Item 6, Schedule 1;
[2] ALRC, Review of Gene Patenting and Human Health, Genes and Ingenuity: Gene Patenting and Human Health , 2004 at 3.27 -3.28 and 6.123 (https://www.alrc.gov.au/publication/genes-and-ingenuity-gene-patenting-and-human-health-alrc-report-99/3-gene-patents/concerns-about-gene-patenting/).
[3] s18(1)(c), s7A(2), Australian Patents Act 1990.
[4] Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989); In re Harwood, 390 F.2d 985, 989, 156 USPQ 673, 676 (CCPA 1968))
[5] Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588
[6] https://manuals.ipaustralia.gov.au/patent/5.6.8.19-useful-specific-substantial-and-credible-use#specific-use-1
[7] https://manuals.ipaustralia.gov.au/patent/5.6.8.19-useful-specific-substantial-and-credible-use#specific-use-1
[8] https://manuals.ipaustralia.gov.au/patent/5.6.8.19-useful-specific-substantial-and-credible-use#specific-use-1
[9] Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588
