13 March 2011

Patent Reform Exposed Part II – Usefulness

This second article in our series on IP Australia’s proposed reforms looks at the new section 7A in the Draft Intellectual Property Laws Amendment (Raising the Bar) Bill 2011.

The purpose of this amendment is to extend the meaning of the word ‘useful’, as it is applied in section 18(1)(c) of the Patents Act 1990, which requires that an invention must be ‘useful’ in order to be patentable.  (This requirement is also termed ‘utility’.)

The purpose of requiring that an invention be ‘useful’ has traditionally been to prevent the granting of patents that have no practical application, or that do not work.  The specific requirements for utility have been developed by the courts, and can broadly be characterised as requiring that the claimed invention must actually achieve what has been promised by the patentee, in the patent specification.

PROBLEMS WITH THE EXISTING UTILITY REQUIREMENT

One problem with the current definition of usefulness is that an inventor is not obliged to promise very much.  Some patent attorneys are in the habit of adding stock ‘promises’ to patent specifications, such as that the invention is intended to ‘at least provide a useful alternative’ to existing products or processes. 

Additionally, there is rarely any practical harm done by granting a patent for something without any practical application, or which simply does not work.  There is generally no commercial value in such things, and thus no reason to infringe a ‘useless’ patent.  Even if the patent is somehow infringed, in the absence of some commercial gain through the infringing act, there would seem to be little value in the patentee seeking to enforce the patent. 

There would therefore seem to be little harm done by the grant of ‘useless’ patents, in the current sense.  Lack of utility is a case often run in oppositions and revocation actions, but which is rarely successful.  Generally the argument is that the specification promises more than the claimed invention delivers, or that the claims are so broad that, although they cover things that are useful, they also encompass things that are not.  This situation would be better dealt with by a proper ‘enablement’ standard, requiring the scope of the claims to be commensurate with the description.  This is another one of IP Australia’s proposed reforms, to which we will return in the next article.

The more serious issues that fall under the general heading of ‘utility’ in many jurisdictions are those relating to speculative claiming of various kinds.  The controversy around gene patents illustrates this very well.  Opponents often complain that allowing patents over genetic technologies results  in private ‘ownership’ of genes.  This should not be the case – a patent should only be granted in cases where the specific function of a gene has been identified, and a specific application, such as a test or therapy, developed as a result.  Historically, however, there is no doubt that overly-broad patents have been granted on isolated genes based on generic descriptions of the processes used to identify their functions and develop practical applications.  Such patents are speculative in the sense that the ‘inventors’ are almost certain that the genes will have some practical use, it is just that it has not been discovered yet!

THE PROPOSED SOLUTION

To address this issue, and others like it, the draft bill proposes a new section 7A, as follows:

7A Meaning of useful
        (1) For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.
        (2) Subsection (1) does not otherwise affect the meaning of the word useful in this Act.

According to the draft Explanatory Memorandum, subsection (1) is intended to bring the Australian law of utility more into line with the meaning of ‘useful’ in the US patent law, and to implement the recommendations of the Australian Law Reform Commission (ALRC) in its 2004 report Genes and Ingenuity: Gene Patenting and Human Health (at 6.100).

The US utility requirements, as implemented by examiners in the USPTO, are set out in the Manual of Patent Examining Procedure (MPEP), Section 2107.  The relevant definitions are summarised in IP Australia’s Explanatory Memorandum as follows:

  1. ‘specific’ means a use specific to the subject matter claimed and can provide a well-defined and particular benefit to the public;
  2. ‘substantial’ means the claimed invention does not require further research to identify or reasonably confirm a real world use;  an application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research; and
  3. an asserted use will be ‘credible’ unless there is evidence that the invention is inoperative (i.e. does not operate to produce the results claimed by the patent application) or there is reason to doubt the objective truth of the statements in the specification.
All of these must be assessed from the perspective of the person skilled in the relevant art.

In addition to the specific requirements in subsection 7A(1), subsection (2) is (if we understand it correctly) intended to ensure that the existing case law also continues to apply.

THE VERDICT

This refinement of the requirements for a claimed invention to be ‘useful’ should go a long way towards addressing some of the perceived problems with patents in fields such as genetic technology, biologics and pharmaceuticals, in which it is not an uncommon strategy to file speculative applications upon the initial discovery of a ‘promising’ molecule or biological material.

For inventions in the vast majority of technical fields, the utility requirement should remain largely irrelevant.  The practical application of the claimed invention in most applications filed is clear and uncontroversial.  The enhanced utility requirement will only be of concern – as perhaps it rightly should be – to those attempting to ‘push the boundaries’ of patentability in specific technology areas.

We therefore consider that this is generally a good reform.

We are, however, a little concerned about the wording of the section, and particularly subsection (2).  The intention appears to be to acknowledge and retain the existing requirement for utility developed by the courts, and add to this a statutory requirement for a specific, substantial and credible utility.  This is not, however, what the proposed section says.  By referring to the ‘meaning of the word useful in the Act’, subsection (2) appears to confuse, rather than clarify, the intent.  It is not at all clear, for example, what ‘otherwise’ means in this context.  What ‘meaning’ is being referred to?  Is it the existing judicial meaning at the time of commencement of the new section7A, or is it subject to further development by the courts?

The word ‘useful’ appears only in section 18 of the Act.  It therefore has only one meaning (whatever that may be).  The circumlocution therefore appears unnecessary.  We would keep it simple, and include the following stipulation within section18 itself:

For the purposes paragraphs 18(1)(c) and 19(1A)(c), an invention may be useful only if a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.

This leave open the possibility (however unlikely) that a claimed invention may pass this statutory test, but nonetheless lack utility, which appears to be the intent.

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