Drafting a Patent Specification with ‘Reasonable Skill and Knowledge’ is a Collaborative Exercise Between Client and Attorney

A recent appeal decision by a Full Bench of the Federal Court of Australia has clarified what is meant by the requirement for a patent specification to be framed with ‘reasonable skill and knowledge’, finding that this is a collective responsibility that arises among everybody involved, including inventors, patent attorneys, and any other corporate managers or intermediaries.  Under Australian law, this requirement arises in relation to the effect of amendments on the rights of a patentee.  In particular, a patent is only enforceable during the period prior to making an amendment if the specification without the amendment was ‘framed in good faith and with reasonable skill and knowledge’.

This decision should be of interest not only to Australian patent attorneys, but to patent professionals globally who are involved in drafting specifications that may ultimately be filed in Australia, and result in the grant of Australian patents.  It confirms that responsibility for ‘framing’ a specification with ‘reasonable skill and knowledge’ does not lie solely – or even primarily – with the person tasked with actually drafting the specification, but is shared between all those involved in the process.

A competent patent attorney might be expected to have reasonable knowledge of the law and practices relating to the drafting of patent specifications, and to make reasonable efforts to obtain necessary information from a client.  However, the client has a key role to play in ensuring that the patent attorney is properly instructed.  And while the patent attorney is not necessarily expected to share the level of domain-specific technical expertise of an inventor, the specification will nonetheless be assumed to have been drafted with the benefit of the client’s knowledge of the invention, including knowledge that the client reasonably should be taken to have had, in all of the relevant circumstances.  Ensuring that this is the case is at least as much the responsibility of the client as it is of the patent attorney (or other patent professional) tasked with drafting the specification.

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Tags: Amendments, Damages, Patent attorney profession, Patent drafting, Patent specifications

Australian Appeals Court Upholds Patent ‘Promise Doctrine’, but it’s a Question of What the Inventor ‘Intended to Do’

The Australian Patents Act 1990 requires, in section 18(1)(c) and 18(1A)(c), that an invention must be ‘useful’ in order to be patentable.  This is also commonly known as the requirement for ‘utility’.  Failure to meet this requirement, i.e. inutility, is therefore a ground upon which a patent application may be rejected, or a patent revoked.  One of of the ‘rules’ that has been developed by the courts over the years for assessing utility is an obligation upon an applicant or patentee to satisfy any ‘promise’ that might be made for an invention in the patent specification.  This is sometimes known as the ‘promise doctrine’ – e.g. in Canada, where it was abolished last year by the Supreme Court.  I had been hoping that a Full Bench of the Federal Court of Australia might decide to do likewise, given that the opportunity had arisen.  In a recently-issued decision, however, it has unfortunately declined to do so: ESCO Corporation v Ronneby Road Pty Ltd [2018] FCAFC 46.

On the face of it, a requirement that an invention fulfil any stated promises does not seem unreasonable.  If, for example, an applicant falsely asserts that an invention is worthy of a patent, at least in part because it achieves some valuable improvement over its predecessors, and receives a patent on that basis, then the Patent Office has arguably been misled in its decision to grant the patent.  However, I do not see what this has to do with utility.  The Australian Patents Act 1990 provides a perfectly good mechanism for revoking patents that have been obtained by ‘fraud, false suggestion or misrepresentation’ in section 138(3)(d).  But if an invention is, in fact, useful for some purpose, and the patent specification otherwise meets all of the requirements for a valid patent, then it is difficult to see why the applicant’s choice to include – or not – some ‘promise’ in the specification should make any difference.

The position becomes even more fraught when a specification includes more than one promise.  This aspect of the utility requirement has not previously been conclusively addressed by the Australian courts – i.e. if a patent applicant makes multiple promises for an invention, it is necessary that all of those promises be met by the claims, individually and/or collectively?  The Full Court’s decision in ESCO Corporation has, at least, clarified this situation, with the court deciding that a claimed invention must indeed meet whatever promise(s) have been made for it in the specification.

However, this does not mean that resolving the question of utility is simple in any given case.  The court has explained that whether or not a relevant promise has been made and met must be addressed, by determining whether the invention as claimed does what it is intended by the patentee to do.  This necessarily involves an enquiry into the patentee’s intentions, through consideration of the specification as a whole, including the claims.  It is therefore not simply a matter of identifying some explicit, straightforward, statement in the specification that appears to make one or more ‘promises’ – as the court did (wrongly) at first instance in the ESCO case – and asking whether the claimed invention satisfies all of the stated ‘promises’. 

As a result of conducting the required enquiry, it can become apparent that the invention, as defined in a specific claim, or group of claims, was not intended to satisfy all of the ‘promises’ made in the specification.  In ESCO’s case this was necessarily so, because its application included two groups of claims defining different aspects of the invention (a component, and an assembly including the component, respectively) that might encompass different subsets of the advantages asserted for the invention as a whole.

So while I would have liked to see Australia follow Canada in cutting ties with old UK law and abandoning the ‘promise doctrine’, the Full Court in ESCO Corporation has at least brought some much-needed sense to the Australian law.  Determining whether or not an invention is ‘useful’ is not some formulaic exercise involving the mere comparison of statements in the specification with the subject matter of the claims.  Rather, it is a matter of substance, whereby the intentions of the applicant or patentee are to be determined, at least insofar as they are expressed in the specification as a whole, in relation to each claim, or group of claims.  On the other hand, the decision may not go far enough, in that it is not clear that it necessarily applies to cases in which there are not two or more distinct groups of claims relating to different aspects of an invention.

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Tags: Appeal, Australia, Patent specifications, Utility/usefulness

Canada Rightly Ditches the ‘Promise Doctrine’ for Utility, Australia Should Follow Suit

Canada is not a republic.  It is, like Australia, a card-carrying, fully paid-up, current member of the British Commonwealth.  Canada’s Head of State is the same nonagenarian resident of ‘Buck House’ who reigns over us here in Australia.  And while Australia and Canada thus have much in common historically, like most siblings we are growing apart as we grow older.  One further step in that direction was taken by the Canadian Supreme Court on 30 June 2017, when it banished the so-called ‘Promise Doctrine’ of inutility from Canadian patent law: AstraZeneca Canada Inc v Apotex Inc 2017 SCC 36.  In my opinion, Australia should do likewise, either via a similar pronouncement from the High Court or, failing that, through legislation.

The Australian Patents Act 1990 requires, in section 18(1)(c) and 18(1A)(c), that an invention must be ‘useful’ in order to be patentable.  This is also commonly known as the requirement for ‘utility’.  Failure to meet this requirement, i.e. inutility, is therefore a ground upon which a patent application may be rejected, or a patent revoked.  There was originally nothing in the Patents Act to explain exactly what is meant by ‘useful’, although since commencement of the Raising the Bar reforms on 15 April 2013 section 7A has specified that, aside from anything else it may mean, ‘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’.

Left to their own devices for an extended period of time, the English courts – and subsequently those of countries, such as Australian and Canada, that inherited their legacy – determined that one of the requirements for an invention to be useful is that it should fulfil any promise that may be made for it based upon a reading of the patent specification as a whole.  Furthermore, although there is arguably some inconsistency in the authorities on this point, if the specification makes multiple promises of utility then a claim will generally be invalid if the invention that it defines does not fulfil all of those promises.  In Australia, this principle was most recently demonstrated in Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588, where Justice Jessup found all claims of an opposed patent application to be invalid for lack of utility because none would deliver each and every one of six advantages listed in the specification, notwithstanding that a number of the claims would deliver one or more of those stated advantages (see Utility Futility? Usefulness of Inventions and ‘Fatal’ Promises Made in Patent Specifications).

This version of the utility requirement is, in my view, self-evidently absurd.  For one thing, it means that a patent having a specification which makes no explicit statement of the advantages said to be provided by invention is less likely to be invalid for lack of utility than one which includes one or more express ‘promises’.  Additionally, where multiple uses are disclosed in a specification, there is absolutely no sound basis – and certainly no basis in the words of the Patents Act itself – for finding an otherwise valid claim to be invalid simply because, although it is useful, it is not useful for all of the purposes that the inventor has chosen to disclose.

Or, as the Canadian Supreme Court has now wisely stated:

The Promise Doctrine risks, as was the case here, for an otherwise useful invention to be deprived of patent protection because not every promised use was sufficiently demonstrated or soundly predicted by the filing date. Such a consequence is antagonistic to the bargain on which patent law is based wherein we ask inventors to give fulsome disclosure in exchange for a limited monopoly.

Now that our Canadian friends have demonstrated the ease with which this particular tie with the Mother Country can be cut, I can think of no good reason why Australia should not do likewise. 

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Tags: Australia, Canada, Patent specifications, Utility/usefulness

Does Your Patent Attorney Possess ‘Reasonable Skill and Knowledge’?

It is a general principle of patent law that publication of a patent specification and claims serves to put the public on-notice of the existence and scope of the patentee’s rights.  In an effort to ensure that this is the case, the Australian Patents Act 1990 requires that ‘the claim or claims must be clear and succinct and supported by matter disclosed in the specification’ (subsection 40(3)), while the analogous US provision, 35 USC § 112(b) states that ‘the specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.’  In Australia we usually refer this as the ‘clarity’ requirement, while the US courts have developed a corresponding doctrine of ‘indefiniteness’.  In its 2014 decision Nautilus, Inc. v Biosig Instruments, Inc, the US Supreme Court interpreted this to mean that ‘a patent is invalid for indefiniteness if its claims … fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention’.  Other jurisdictions have similar requirements.

This is all very well, but what happens if the claims change?  It is not uncommon for a patentee to seek amendment of its patent specification, for example in preparation for, or in the course of, litigation.  Granted patent claims can only be amended in ways that do not broaden the scope of a patent, i.e. no valid amendment can result in any act becoming an infringement that would not have been an infringement prior to the amendment, so this does not provide a mechanism for a patentee to ‘capture’ a previously non-infringing activity.  However, a claim could, in principle, be narrowed by replacing unclear, vague, or ambiguous wording with clearer and more definite wording that specifically targets the actions of a competitor.

In such a case, the patentee would no doubt argue that it was simply ‘tightening up’ the language of its claims to limit the issues to be addressed during infringement proceedings, and perhaps as a pre-emptive defence against a cross-claim for invalidity.  The accused infringer, on the other hand, might argue that it was not properly on-notice of scope of the patent prior to the amendment, as a result of the ambiguity in the wording of the claims.

Fortunately, the Australian legislation anticipates this situation.  Subsection 115(1) provides that:

Where a complete specification is amended after becoming open to public inspection, damages shall not be awarded, and an order shall not be made for an account of profits, in respect of any infringement of the patent before the date of the decision or order allowing or directing the amendment:
        (a)  unless the court is satisfied that the specification without the amendment was framed in good faith and with reasonable skill and knowledge…

In layperson’s terms, if the job was not done honestly and properly in the first place, then the patentee should not expect to be able to obtain any compensation for alleged infringement that occurred prior to the amendment.

But what constitutes ‘reasonable skill and knowledge’?  Does your patent attorney (or, if you are a patent attorney, do you) possess these attributes?  And what responsibility does a patent applicant, in instructing a patent attorney, bear in ensuring that reasonable skill and knowledge are employed?  These issues were recently considered by Justice Jagot in the Federal Court decision Bayer Pharma Aktiengesellschaft v Generic Health Pty Ltd [2017] FCA 250, who confirmed that ‘the words “reasonable skill and knowledge” require the specification as framed to be in the form in which a person, with reasonable skill in drafting patent specifications and a knowledge of the relevant law and practice, would produce given the patentee's knowledge of the invention.’  The judgment also provides some interesting guidelines as to what, exactly, might be expected of a patent attorney in order to meet this standard.

The question was not merely academic, with over $25 million in damages at stake.  And it may not yet be finally settled, with various aspects of the case now in appeal to a Full Bench of the Federal Court of Australia.

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Tags: Amendments, Damages, Patent attorney profession, Patent drafting, Patent specifications, Pharmaceuticals

Utility Futility? Usefulness of Inventions and ‘Fatal’ Promises Made in Patent Specifications

The Australian Patents Act 1990 requires, in section 18(1)(c) and 18(1A)(c), that an invention must be ‘useful’ in order to be patentable.  This is also commonly known as the requirement for ‘utility’.  Failure to meet this requirement, i.e. inutility, is therefore a ground upon which a patent application may be rejected, or a patent revoked.

A number of ‘rules’ have been developed by the courts over the years for assessing utility.  These were succinctly summarised by Justice Beach in Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 (a decision that was upheld on appeal) in the form of three questions:

1. What has the patentee promised for the invention as described in the relevant claim?
2. Is the promise useful?
3. Has that promise been met?

Furthermore, it has been held that ‘everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility’ (H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [81]).

One aspect of the utility requirement that has perhaps been less consistently addressed is whether, if a patent applicant makes multiple promises for an invention, it is necessary that all of those promises be met by every claim.  For example, suppose a patent is directed to bionic implants promises to create a human cyborg that is better, stronger and faster than the original.  Is a claim for a bionic eye invalid because it only achieves one of these three objectives?

In practice, it is not uncommon for patent specifications – particularly those drafted primarily with the US in mind – to include multiple ‘object’ statements, without a necessary expectation that each and every claim satisfies each and every stated object.  It is a common practice of Australian patent attorneys to amend such statements in order to moderate the promises being made such that, for example, no more than some substantive progress towards achieving at least one of the desired benefits is asserted.

It should, in fact, be the standard practice of all Australian patent attorneys to do this, as a recent Federal Court judgment demonstrates.  In Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588, Justice Jessup found all claims of an opposed patent application to be invalid for lack of utility because none would deliver each and every one of six advantages listed in the specification, notwithstanding that a number of the claims would deliver one or more of those stated advantages.

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Tags: Australia, Patent specifications, Utility/usefulness

What Materials Can I File With My Patent Application?

It is widely understood that the kinds of materials that may make up a patent application are quite strictly limited.  However, comments by the judge in a recent decision of the Federal Court of Australia suggest that IP Australia may be obliged to make reasonable efforts to access, review and take into account any materials filed by an applicant is support of a patent application or, at the very least, expressly advise the applicant if unable to do so.

When applying for a patent in Australia, it is necessary to file a specification comprising a description, claims and (where necessary or helpful to explain the invention) accompanying drawings.  Regulation 3.1(1) also requires that an abstract be filed.  Schedule 3 of the Patents Regulations 1991 sets out the general requirements for the format of these documents.

Beyond the basic application documents, the Patents Act 1990, the Regulations, and IP Australia’s Electronic Business Rules, appear to leave little scope for filing of additional materials to support a patent application.  It is possible to include such things as engineering designs, example program code for software-based systems, and other implementation details of prototypes or fully-functional implementations of an invention.  However, these are generally provided simply as annexures to the patent specification, in the form of text and/or drawings which are subject to the usual format rules as set out in Schedule 3 of the Regulations.

Gene sequence listings, which may be required to provide full disclosure of certain inventions in the field of biotechnology, are a special case, because of their sheer size.  They may therefore be filed electronically, as separate files structured in accordance with the standards specified in Annex C of the Administrative Instructions of the PCT.

Finally, microbiological materials that are not otherwise available, and which are necessary to put the invention disclosed in the specification into effect, must be deposited with an approved depository institution (see section 6 and section 41 of the Patents Act).

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Tags: Australia, Best method/mode, Examination, Patent filing, Patent Office, Patent specifications