Section 18(1)(c) of the Patents Act requires that an invention is a patentable invention if, inter alia, the claimed invention is useful. Existing case law provides that usefulness broadly means that the invention must achieve the promised benefit.
Past reviews of the Patents Act have suggested that the definition of usefulness be strengthened in order to prevent the grant of patents for speculative inventions that require too much further work before they can be put into practice.
The Bill proposes the introduction of a new section 7A to the Patents Act which provides a meaning of useful. An invention is to be taken not to be useful unless a specific, substantial and credible use for the claimed invention is disclosed in the complete specification. Further, the disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.
This requirement for a specification to disclose a specific, substantial, and credible use for the invention is in addition to the requirement of section 18 for the invention itself to be useful, in the sense of actually achieving what is promised by the patentee in the specification, ie meeting the promise of the invention.
The definition of useful proposed above will not be unfamiliar to our US counterparts as it is intended to be closely aligned with the USPTO utility requirement which provides that an applicant must establish a specific and substantial utility for the invention that is credible.
The Explanatory Memorandum of the Bill summarises the US courts’ current interpretation of these terms as follows:
It is important to note that the specific, substantial and credible use must be disclosed in the specification. According to the Explanatory Memorandum this can take the form of an explicit disclosure, or if the skilled person could appreciate the use, with their background knowledge in the art and without undue burden then the disclosure need not be explicit.
In practice it is expected that this proposed amendment to the Patents Act will not have a significant impact on the majority of patent applications and how they are drafted. The amendments will show their usefulness by eradicating the claiming of speculative inventions, thereby strengthening the requirement that patented inventions are useful.
This article was written by Rachel Montgomery, Senior Associate, Melbourne.