Australia: Court decides on cases concerning (i) a claim term mistake and (ii) utility

The decision of the Full Federal Court in GlaxoSmithKline (GSK) Consumer Healthcare Investments (Ireland) (No 2) Limited v Generic Partners Pty Limited (2018) FCAFC 71 (May 10 2018) indicates that a mistake in a claim cannot be ignored even where the skilled person understands that a mistake has been made. For infringement of claim 1 of Australian Patent No 2001260212 to have been made out by GSK, it was necessary for the term "reciprocating basket" to mean "reciprocating cylinder" or for the term "reciprocating basket" to be ignored altogether.

The Court had to determine whether recitation of a paracetamol bilayer tablet, having a specific dissolution profile determined by the use of a United States Pharmacopeia (USP) type III apparatus with a "reciprocating basket", could be equated with a "reciprocating cylinder".

In the first decision each USP-type apparatus was called something different. For example, the term "basket" was generally used by pharmaceutical scientists to refer to a type I apparatus and not a type III apparatus, the latter usually referred to as a "reciprocating cylinder." The question was whether the skilled person would have understood "basket" as an error where "cylinder" was meant.

The Court held that "basket" means "basket" and not "cylinder" despite reference in the claims to type III apparatus. These references were not considered sufficient on their own to describe the apparatus relevant to the claimed method. Any attempt to correct the language by way of amendment would have expanded the scope of the claim which was impermissible.

The utility of an invention is embodied in Section 18(1)(c) of the Australian Patent Act 1990. This requires an invention to be useful in order to meet one of the requirements of patentability. According to the Australian Patent Examiners Manual, when considering section 18(1)(c), examiners are required to consider the use to which an invention is to be put. Sometimes this may be implicit but if it is not, they will look to the object statements or statements of promise in the specification and assess whether the claimed invention achieves the promised benefit.

For the first time, the Court considered whether, where a specification includes more than one promise (composite promise), utility is satisfied if at least one of the promises is met. ESCO's specification consisted of a number of claims directed to either a "wear member" or a "wear assembly". Paragraph 6 of the specification stated:

"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."

Expert evidence indicated that none of the claims provided all of the advantages recited in paragraph 6, although every claim was found to provide at least two of them. The primary judge concluded that since no claim provided all six of the stated promises or advantages, all claims were invalid for lack of utility.

On appeal, the Full Court reviewed Australian case law on utility and confirmed that if a patent specification, having regard to the whole of the specification including the claims, contains a composite promise, a failure to attain any one of the promised elements in any claim would render that claim invalid for lack of utility. Thus, the issue for the Full Court was to identify the correct promise and ask whether the invention as claimed met that promise.

This is not simply a case of identifying a statement that on the surface makes one or more promises. Rather, the Court noted a requirement to consider the body of the specification and the claims together to find a "degree of symmetry between the two". It was significant that ESCO's application included two clusters of claims – the wear assembly and the wear member. The Full Court adopted the view that a relevant promise for each cluster needed to be identified.

Following this approach, the Court decided that paragraph 6 of the specification was not a language of promises for the invention described in the specification as a whole, noting that some of the claims concerned only the wear member and others concerned only the wear assembly. Instead, the Court found that paragraphs 15 and 16 of the specification contained the relevant promises:

[15] In one other aspect of the invention, the lock is integrally secured to the wear member for shipping and storage as a single integral component. The lock is maintained within the lock opening irrespective of the insertion of the nose into the cavity, which results in less shipping costs, reduced storage needs, and less inventory concerns.

[16] In another aspect of the invention the lock is releasably securable in the lock opening in the wear member in both hold and release positions to reduce the risk of dropping or losing the lock during installation. Such an assembly involves fewer independent components and an easier installation procedure.

The Court also noted that even if paragraph 6 was taken to represent a collection of promises, those promises should be read disjunctively. The Court noted that the wording "and ease of replacement" in paragraph 6 suggests conjunction rather than disjunction, but justified its construction on the basis of a consideration of the specification as a whole.

This decision tells us that determining the promise of the invention involves more than simply identifying a statement that on the surface appears to make a promise, but rather a consideration of the specification as a whole, including the symmetry between the description and claims. It also serves as a timely reminder that the ground of utility is still alive in Australia, and that ambitious promises should be avoided when drafting specifications.

FB RiceLevel 23, 44 Market St Sydney NSW 2000, AustraliaTel: +61 2 8231 1000Fax: +61 2 8231 1099contact@fbrice.com.auwww.fbrice.com.au