“Useful choice” clauses – what’s the use?

“Useful choice” clauses are, these days, something of a peculiarity of our local patent drafting. They are a particular type of object clause, usually phrased as an alternative after all of the other, substantive, object clauses in the general form “or at the very least provide the public with a useful choice”.

“Useful choice” clauses are intended to function as a “parachute”, preserving the utility of the patent in the event that all other purported objects of the invention turn out to be unfulfilled by the claims. Or so the reasoning goes. But it is interesting to ask how far this “parachute” would really carry an invention – particularly given the relatively recent tightening up of the definition of utility.

Utility, object clauses, “useful choice”

Utility / usefulness is a requirement of New Zealand and Australian patent law, with inutility accordingly being a ground for challenging a patent or application[1] [2]. For a claim to meet the “utility” requirement, at least one of the objects / purposes of the invention must be fulfilled across the entire scope of that claim[3]. In Hammar Maskin AB v Steelbro New Zealand Ltd[4] (decided prior to the introduction of the statutory definition of “useful”, discussed below), the New Zealand Court of Appeal remarked that:

“where the patentee promises (expressly or impliedly) the attainment of a certain result and this is not obtained, or what is stated as the main object of the invention is not obtained, the patent will be invalid”.

Also of note is the UK case of Lane-Fox v The Kensington and Knightsbridge Electric Lighting Co., Ld (1892) 9RPC 413, at 417: 

“If the result is that the object sought to be attained by the Patentee can be attained, and is practically useful at the time when the Patent is granted, the test of utility is satisfied. Utility is often a question of degree, and always has reference to some object. ‘Useful for what?’ is a question which must always be asked, and the answer must be useful for the purposes indicated by the patentee.”

As such, object clauses, while not mandatory, are advantageous in that they “shape the narrative” of any utility challenge in the future. If the question is “useful for what?” and the answer is “for the purposes intended by the patentee”, then in articulating the object(s) of the invention the patentee puts a preliminary gloss on the discussion by announcing what their purpose(s) are. Otherwise, these would be a matter of inference based on the specification, in a manner possibly less favourable to the patentee.

From this, the “parachute” rationale of the “useful choice” device becomes apparent: in the event that the substantive object(s) of the invention prove overzealous, the “useful choice” clause is by its nature (so the theory goes) so broad that it will virtually always be fulfilled, and thus there will always be some measure of utility. By the same token, it is something that might not be inferred from the specification if not explicitly stated as an object of the invention.

The original “useful choice” device derives from the UK case of British Liquid Air Co Ltd v British Oxygen Co Ltd (1909) 26 RPC 577 (CA), where the formulation “it gives to the public a useful choice" from an earlier decision was cited with approval. 

In Halsbury’s Laws of England, (3rd ed.), vol. 29, at p. 59, the concept of an invention being “not useful” was explained as meaning “that the invention will not work, either in the sense that it will not operate at all or, more broadly, that it will not do what the specification promises that it will do”… “the practical usefulness of the invention does not matter, nor does its commercial utility, unless the specification promises commercial utility, nor does it matter whether the invention is of any real benefit to the public, or particularly suitable for the purposes suggested”… “it is sufficient utility to support a patent that the invention gives either a new article, or a better article, or a cheaper article, or affords the public a useful choice.”

Going back even further, early UK authority[5] frames the question as being whether the invention is “of any use at all”, where said “any use” can relate to better quality or cheaper cost. Accordingly, for a finding of inutility, “a jury must expressly find that an invention is of no use”. This early conception of utility would seem to have an air of “useful choice” about it. However, this early commentary is of limited assistance as it does not take into account the idea of an “express or implied promise” by the patentee. Rather, it appears to treat utility as an objective enquiry,[6] with its rationale being not the fulfilment of a “promise” (i.e. object / purpose) but rather that the grant of a patent on a non-useful invention would “tend to the hurt of trade or be “generally inconvenient” by preventing subsequent inventors from developing an equivalent that actually works.

In any event, despite having its origins in UK case law, the “useful choice” device is no longer a facet of mainstream patent drafting around the world,[7] [8]  In many jurisdictions, including the UK and Europe, this may be in part because “susceptibility of industrial application”[9], rather than utility per se, is the relevant yardstick (and the problem-solution claim structure applied in Europe and some other jurisdictions may also diminish the importance of object clauses generally).

In the US – which does require usefulness, and from whose guidelines our current “specific and substantial utility” rubric is borrowed – the “useful choice” device does not seem to be in wide usage.[10] The reason for this may be that US Courts are “reluctant to uphold a[n inutility] rejection… solely on the basis that the applicant’s opinion as to the nature of the specific and substantial utility was inaccurate”[11] – that is to say, deficiencies in the substantive object(s) may not be fatal to a patent or application in the way that they are in New Zealand and Australia; thus there may not be a need (or perceived need) for the “useful choice” device as a backstop.

Introduction of a statutory definition of “useful”

New Zealand’s Patents Act 2013 introduced for the first time a statutory definition of “useful” (in s 10), namely “ha[ving] a specific, credible and substantial utility” – concepts borrowed from US jurisprudence and guidelines.[12] [13]

From the IPONZ Manual it appears that these new requirements have been stacked on top of the pre-existing “promise” principles, rather than supplanting them; see for instance paragraph 2: “Useful is defined… as having a specific, credible and substantial utility. The claimed invention must also actually achieve what is promised by the patentee.” As a side-note, it might be questioned whether “superposing” the two sets of principles in this manner is in line with the actual wording of s 10, which arguably doesn’t leave room for the inventor’s “promises” / objects. In saying that, the corresponding US guidelines as to “specific, credible and substantial utility” do have regard to objects presented (explicitly or implicitly) in the specification so it is arguable that the two sets of criteria are reconcilable.

Regarding the “specificity” requirement, the IPONZ Manual states:[14] “A specific utility refers to a utility that is specific to the subject matter claimed and can provide a well-defined and particular benefit to the public.” It goes on:[15] “if the specification only discloses a general utility or a utility so broad that it merely indicates that an invention has been made without disclosing what that specific invention is, then a specific utility has not been disclosed.” Examples[16] of insufficiently specific utility include “a class of chemical compounds [] stated to be ‘pharmaceutically active’ without any explanation of the type of activity”.

As for “substantial utility”, the IPONZ Manual (borrowing from its US counterpart) expresses this as “an immediate, well-defined, real world benefit to the public”[17]; where by “public benefit” is meant that “the asserted utility is a desirable outcome based upon a concrete need in the art.”[18]

The relevant section of the IPONZ Manual concludes[19] with the following observation, which appears to echo the Lane-Fox principle: “Generally, the test is ‘does the invention do what the patentee intends it to do and is the end result itself useful?’”.

Section 7A of Australia’s Patents Act 1990 (Cth) came into effect in 2013 and contains a similar definition, likewise modelled on US jurisprudence,[20] requiring a “specific, substantial and credible use for the invention (so far as claimed)” to be disclosed in the specification. As with the IPONZ Manual, the IP Australia Patent Manual of Practice and Procedure indicates that these criteria are superposed on top of existing “promise” principles.[21]

Discussion

Some questions come out of this. How useful are “useful choice” clauses under the current statutory framework, if at all? And just as interestingly, how useful were they to begin with?

As noted at the beginning of this article, when we insert a “useful choice” clause into a specification we have in the back of our minds the notion that it will function as a “parachute” if all else fails. But it’s arguable that this hasn’t been tested in earnest. In this regard, I have in mind a scenario where the substantive objects are clearly unfulfilled, and the “usefulness” the patentee points to is of the “commercial alternative” variety. One can imagine this being the case where the substantive objects promise a device that is “improved” in various respects, whereas the device in fact proves to be inferior to prior art devices. This would debunk the substantive objects, but not necessarily the proposition that the invention provides a “useful choice” commercially.

Though ostensibly a number of cases have looked at the “useful choice” device, in all instances they have tied this back to the technical / substantive objects of the invention rather than considering it as a stand-alone proposition.

Starting with the British Liquid Air case itself: the full wording of the passage at p 607 is:

“Whether, therefore, considered as an oxygen producer, the Plaintiffs' machine gains anything by fractionating the condensed liquid I cannot say - there is no theoretical reason why it should do so, and there is no evidence that in fact it does. But, as a nitrogen-producing machine, it certainly gains, and in any case - to employ the very apt language used in a judgment of Mr. Justice Romer - "it gives to the public a useful choice," and as such possesses all the meritorious utility requisite to support a Patent.”

Certainly the underlined portion of the quote appears broad. But in British Liquid Air the “main” utility of the invention, in the sense of technical efficacy, was not in doubt: “the [parties’] machines are alike in the purity of the oxygen they can produce” (p 606). Thus, on its facts the case was not truly a test of how far the “useful choice” device can be taken, and in particular whether it would really provide “all the meritorious utility requisite” if the technical purposes of the invention were entirely unfulfilled and all that was left was “choice” in a loose sense.

In saying that, the “nitrogen” comments in the decision are interesting. Per the above excerpt, the Court noted that “as a nitrogen-producing machine, [the invention] certainly gains [over the prior art]”. The discussion at p 606 makes clear that nitrogen is in fact a waste product of the invention. In spite of this, the Court stated as follows:

“The Plaintiffs' machine is entitled to claim utility, from the point of view of Patent law, in that it separates the nitrogen more completely from the oxygen, and, if pure nitrogen had any commercial value, it would be far ahead of its competitor in this respect”.

Taken at face value, this comment would seem to suggest that an end result can found a claim to utility even if it is divorced from the intended technical effect of the invention – indeed, even if it is a waste product thereof. If true, this may after all invite a liberal reading of the comments relating to “useful choice”. If even a waste product (of the intended technical effect) can form the basis of utility, then why not a “useful choice” in a broad commercial sense? 

In Martin Engineering Company and E.S.S. Engineering Services and Supplies Pty Ltd v Trison Holdings Pty Ltd trading as Dyna Engineering (W.A.)[22], though the headnote suggests “useful choice” saved the day, on a closer reading it seems that the Court treated the “useful choice” clause as being closely intertwined with the technical objects.

The objects clause expressed an aim to “obviate or minimize the [prior art] disadvantages… or at least provide the public with a useful choice” (p 334). The disadvantages in question included the need for conveyor shutdown (to effect maintenance), difficulty with wiper-blade disconnection, and “in the majority of situations” the need to remove the support shaft.

Not only did the Court find that the invention was useful in the sense of being “capable of making “the wheels … go round”” (p 336), but also, in relation to the three specific problems in question, they placed a technical gloss on the notion of “useful choice”, in each case finding that a “useful choice” was present due to the invention providing a practically / technically viable solution, even if not the only such solution and even if one that did not, or did not necessarily, obviate the specifically-noted prior art disadvantages.[23] In this regard, the Court arguably employed the “useful choice” clause in a “remedial” manner – recognizing that the substantive objects might not be strictly met, but at the same time recognizing that the invention was nonetheless technically meritorious in a relevant sense.

Furthermore, at p 337 the Court went on to say: “It is true that, for the purposes of utility… if [the claims] assert a monopoly, not only in respect of something useful, but also in respect of something not useful, the patent is bad”. If the Court had intended the phrase “useful choice” in some all-encompassing sense, then the category of “something not useful” would be redundant. This further reinforces that they understood “useful choice” to indicate a technically-suitable alternative, as opposed to being a “catch-all” phrase.

In Merial, Inc. v Bayer New Zealand Limited[24] and Norbrook Laboratories Limited v Bayer New Zealand Limited[25] [26], the “useful choice” device was again linked back to the other, technical, objects of the invention, rather than being considered as a stand-alone proposition. In Merial, the Delegate essentially found that there was a “useful choice” by virtue of the substantive objects having been met[27]. Similarly, in Norbrook the technical efficacy of the invention was established and it was on this basis that the Delegate found a “useful choice” to be present.[28]

Thus, it remains an open question how far the “useful choice” clause can actually be taken, under the “old” principles let alone the “new” ones. The cases have approached the “useful choice” clause in a manner intertwined with the technical objects of the invention, not as a stand-alone clause; on the facts, they haven’t needed to. It does not appear to have actually been tested whether “useful choice” can really fulfil a “parachute” function in isolation from an invention’s technical merits – whether it can save an otherwise “dud” invention on the grounds that it provides a “choice” in some watered-down sense.

At least in theory, under the “old” principles this may have been possible. If what mattered was the “promise made” by the patentee, and if – per Halsbury – this need not be technical or purpose-based but can just be commercial or related to price – then arguably there was no reason why “useful choice” could not operate to salvage a technically-debunked invention on the basis of its being “another one on the shelf”[29]. 

How about under the “new” principles – would this still be possible? How far might semantics take us? The requirement that the utility be “well-defined” and “specific to the subject matter claimed” might be fulfilled by indicating the technical field (and even the particular product) regarding which the useful choice is promised. Likewise the requirement that there be “an immediate benefit to the public”, being a “desirable outcome based upon a concrete need in the art”, might be satisfied by stating that the end consumer will be advantaged by greater choice of available products (virtually always true from a commercial perspective). Such a “useful choice” clause might be along the lines of:

Provide a benefit to consumers of [the relevant type of product in the relevant technical field] by providing an alternative to other [products of the relevant type] available on the market, thereby increasing consumers’ choice.

However, this may be wishful thinking. If ‘a class of chemical compounds [] stated to be “pharmaceutically active” without any explanation of the type of activity’ is insufficiently specific, then it is difficult to imagine a useful choice clause, however worded, passing this test.

The more relevant / realistic question is whether, under the “new” principles, a “useful choice” clause would still be effective in a “remedial” sense, to prop up a substantive / technical object that falls just short of the mark for whatever reason (in a manner broadly similar to Martin). Does the requirement for “specific, [credible and] substantial utility” mean it’s a more “binary” question now – either an invention delivers on its substantive objectives or it doesn’t? Or could the “useful choice” device still nudge it across the line, as before? The new definitions would tend to make this more difficult – the idea of “specificity” is not easily reconcilable with an invention that is “in the vicinity” of achieving its stated objective. And as for “substantiality”, the Manuals talk about this connoting immediacy, something that is available now, not at some point in the future once an invention’s kinks are ironed out.

Conclusion

We’ve always used it, and we’ll continue to use it.

But it is interesting to consider how far the “useful choice” device would actually carry an invention, particularly under the “new” rules around utility. Can it (and could it ever) truly function as a “parachute”? If not, then can it still at least fulfil a remedial function to nudge slightly deficient technical objects across the line?

Author: Anna Klepacki

Footnotes:
[1]  Patents Act 2013, ss 14(c), 92(1)(a), 114(1)(a); see also ss 94 & 95.
[2]  Patents Act 1990 (Cth), ss 18, 59, 138.
[3]  IPONZ Patent Examination Manual, Section 10, at [32]; and H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [81].
[4]  [2010] NZCA 83, at [76].
[5]  The Patentee’s Manual, Johnson, J. & Johnson, J.H., 3rd Edition, 1866.
[6]  The “objective” manner in which usefulness is treated in this early commentary is evidenced by the suggestion that ex post facto evidence of “an improvement in trade” (in a commercial sense) in consequence of the invention can be relevant to demonstrating utility; as well as that an invention “not meeting with public acceptance” / “not be[ing] called for by the public” can be a relevant consideration.
[7]  CNH Industrial Belgium NV [2018] NZIPOPAT 7, at footnote 2.
[8]  In Canada, the banishment of the “Promise Doctrine” may have an effect on the role of “useful choice” clauses: AstraZeneca Canada Inc. v. Apotex Inc, 2017 SCC 36.
[9]  According to TRIPS Art. 27, footnote 5, “capable of industrial application” may be deemed synonymous with “useful”. However, where the “industrial application” criterion applies this would still account for the non-usage of the “useful choice” phraseology per se in patent drafting.
[10]  Going by the USPTO’s AppFT portal, the vast majority of applications containing the phrase “useful choice” (in the relevant sense) are in fact linked to a New Zealand or Australian priority document (or are otherwise linked to those jurisdictions via applicant and / or inventor). First 50 results considered (second 50 selectively browsed through). Examples: US2011012055; US2021106139; US20210386957; US20210390751; US20210390534; US20210388636; US20210388368; US20210348412; US20210386951; US20210386100; US20210384770; US20210370587; US20210332023; US20210333713; US20210337816; US20210348347; US20210361838; US20210340153; US20210348400. Interesting exceptions – i.e. where the “useful choice” clause features but there is no apparent connection to Australia or New Zealand – are for example: US20210323625; US20210354963; US20210347606; US20210335140; and US20210324198.
[11]  Manual of Patent Examining Procedure, Latest Revision June 2020 [R-10.2019], 2107.01   General Principles Governing Utility Rejections [R-5], I. SPECIFIC AND SUBSTANTIAL REQUIREMENTS.
[12]  Intellectual Property Law, LexisNexis, para [Pat10.1].
[13]  Manual of Patent Examining Procedure, Latest Revision June 2020 [R-10.2019], 2107.01   General Principles Governing Utility Rejections [R-5].
[14]  IPONZ Patent Examination Manual, Section 10, At [4].
[15]  At [5].
[16]  At [6]
[17]  At [23]
[18]  At [19]
[19]  At [32]
[20]  IP Australia Patent Manual of Practice and Procedure, at 2.9.3.4.1.2A.
[21]  2.9.3.4A and 2.9.3.4.1A.
[22]  [1989] FCA 74; 14 IPR 330.
[23]  See p 335 regarding shaft-removal; p 337 regarding blade disconnection; and p 339 regarding stopping the belt.
[24]  [2018] APO 14.
[25]  [2020] APO 31.
[26]  Both of these were decided after the introduction of the “useful” definition into the Patents Act 1990 (Cth), but appear to reason along the old lines without considering the new criteria.
[27]  See [43] – [45] and [213].
[28]  See [34] and [71]. At [34], based on evidence that the invention is at least “no worse” than an existing, “highly effective” product, the Delegate comments “This is consistent with the stated problem in the specification of providing a “useful alternative”.”
[29]  In New Zealand, this issue could still in theory come before a court if an old-Act patent were challenged under s 41(1)(g) of the 1953 Act.

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