Unconditional Promise of the Invention to be Judged Against Every Claim

In Ronneby Road Pty Ltd v Esco Corporation a Federal Court Judge held that unconditional statements in the specification about the inventions utility must be satisfied by every claim...

Esco’s accepted patent application is in the field of heavy excavation equipment and concerned a wear assembly for securing a wear member to excavating equipment. In the summary of the invention it was stated that:

“The present invention pertains to an improved wear assembly for securing wear members to excavating equipment for enhanced stability, strength, durability, penetration, safety, and ease of replacement.”

The accepted application had 26 claims relating to 14 aspects of the invention. Expert evidence established that no single claim contained all six of the utility features mentioned in the summary of invention. Esco submitted that either the promise of the invention should be understood in light of the specification as a whole or that the stated six utility features should be understood as being appropriately distributed across the relevant claims.

However, the Judge effectively held that the utility statement should be judged against each claim independently, and so held that the application is invalid for inutility since no claim satisfied all of the claimed utility features.

It is notable that this decision was made under pre-Raising the Bar legislation and that the rationale applied will also apply under the Raising the Bar legislation (which commenced in April 2013). With respect to utility the new legislation added the requirement for a ‘specific, substantial and credible use’ to be disclosed in the complete specification in sufficient detail to be appreciated by a person skilled in the art.

Author: Quinn Miller

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