Imagine that you have applied for a patent on an improved iron ore wagon. During examination, you wanted to distinguish your invention from pre-existing ore wagons. You therefore explained that your wagon has ‘an internal ridge’ that reinforces the side wall, and is ‘integrally formed within the side wall’, and you amended your claim to include this ‘integrally formed’ language. Flash forward to a few years later, and you are in court arguing that one of your competitor’s iron ore wagons infringes your patent. However, the competitor’s product has an internal ridge that is initially made separately from the side wall, and subsequently attached, e.g. by welding or riveting. The court therefore has to decide whether this structure falls within the scope of the terminology ‘integrally formed within the side wall’.
This is, in a nutshell, the question that recently came before Justice Nicholas in the Federal Court of Australia (Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd [2015] FCA 1100). Interestingly, it raises four separate issues:
- whether the term ‘integrally formed’, in and of itself, excludes the two-step constructions;
- whether the amendment of the claims to include the ‘integrally formed’ language during examination informs interpretation of the term;
- whether the applicant’s accompanying explanation of the advantages of the claimed structure should be taken into account when interpreting ‘integrally formed’; and
- whether the patentee is now barred (or, in legal parlance ‘estopped’) from making a different argument in court to the one it made during examination.
The short answer is ‘somewhat’, but to nowhere near the extent it would be in some other jurisdictions, and in particular the United States. And – spoiler alert – no, ‘integrally formed’ does not include something made in two parts and then joined together!
Tags: Claim construction, Estoppel, Examination
