Court finds claims lack utility for not satisfying a ‘composite promise’ in a patent specification

In the recent Federal Court decision, Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 (the decision), Justice Jessup found all the claims of an opposed application invalid for lack of utility because none would deliver each and every one of six advantages listed in the specification, despite there being evidence showing that a number of the claims would deliver one or more of those stated advantages.  The Court has therefore ruled that for a patent claim to be valid, and where advantages are expressed cumulatively in the specification, every promise about the invention must be delivered by performing that claim.


The decision is an appeal, pursuant to s 60(4) of the Patents Act 1990 (Cth) (the Act), from a decision of a delegate of the Commissioner of Patents on 5 February 2015 to reject the opposition of the applicant, Ronneby Road Pty Ltd (Ronneby), to the grant of a standard patent in the name of the respondent, ESCO Corporation (ESCO). The applicant challenged the validity of the respondent’s patent, arguing that its opposition should be upheld on the grounds of want of novelty in relation to certain claims, want of fair basis and inutility.  This article will only discuss the issue of inutility.


The patent at issue, Australian Patent Application No. 2011201135, has a priority date of 30 March 2006 and is for an assembly that includes wear parts and a means of attaching the parts to excavation equipment, such as excavating buckets or cutterheads, in order to protect the equipment from wear and to enhance the digging operation during heavy excavation.

The invention relates to excavating teeth wear parts, and consisted of a casing that fits over existing “teeth” on excavation equipment. This casing is secured directly onto the equipment or is secured to the base by way of a locking mechanism. The dispute over this locking mechanism formed the basis for these proceedings.

The Federal Court’s decision

Ronneby challenged claims 1, 2, 6, 7, 9 to16, and 18 to 23 of ESCO’s patent application on the basis of lack of novelty, and contended there was no fair basis for claims 4, 8 and 16.   Jessup J upheld the applicant’s novelty case in relation to all argued claims except for claim 2, and additionally found that Ronneby had failed to make an argument that the specification was insufficient as a “real and reasonably clear” disclosure of the claims.

In relation to the requirement for ‘utility’, the Act requires (in section 18(1)(c) and 18(1A)(c)) that an invention must be ‘useful’ in order to be patentable. There are a number of ‘rules’ which have been laid down by the Courts over time for assessing utility. The “basic principle” of inutility is that if an invention “does what it is intended by the patentee to do, and the end attained is itself useful, the invention is a useful invention”[1].  More recently, Beach J has clarified the test in the form of three questions[2]: “What has the patentee promised for the invention as described in the relevant claim? Is the promise useful? Has that promise been met?”  Furthermore, it has been previously held that “everything that is within the scope of a claim must be useful, otherwise the claim will fail for inutility”.[3]

Ronneby noted that there were multiple advantages promised by the inventors, namely, “enhanced stability, strength, durability, penetration, safety, and ease of replacement”, and argued that these advantages are expressed cumulatively, that is to say, “…the relevant promise was that they were all delivered by the invention in so far as claimed in every claim.”[4] (original emphasis)

The experts were asked to identify which claims would necessarily achieve the advantages promised by the inventors, and concluded that none of the claims would achieve enhanced strength, durability, or penetration; some of the claims may provide a minor stability advantage; and other claims  would achieve enhanced safety, or enhanced ease of replacement.

ESCO responded on 2 grounds: firstly, that the entire specification needed to be taken into account when determining the relevant promise, and secondly, that claims only needed to attain one promised result to retain utility, rather than as a composite promise which conveyed the sense that all six advantages would be delivered by the invention so far as claimed in every claim.

His Honour reviews the relevant authorities and applied Pracdes Pty Ltd v Stanilite Electronics Pty Ltd[5], thereby upholding the applicant’s utility objection in relation to all of the claims in the patent on the basis that none would deliver each and every one of six advantages listed in the specification.

The matter has been listed for further hearing, where the parties are to make submissions as to orders and further costs.

Concluding comments

Whilst it seems possible in this case that the Applicant may now be able to amend the patent specification to make it clear that the claims satisfy one or more of the six promises, and thereby cure the inutility issues, the decision highlights the importance of carefully drafting patent specifications (or reviewing and amending during prosecution) to make it clear that any multiple promises of the invention are not stated as a composite promise. It is also preferable not to promise too much in the patent specification, as any variation between what is promised and what is achieved could lead to a finding of inutility.

[1] Fawcett v Homan (1896) 13 RPC 398

[2] Streetworx Pty Ltd v Artcraft Urban Group Pty Ltd [2014] FCA 1366 at [340]

[3] H Lundbeck A/S v Alphapharm Pty Ltd [2009] FCAFC 70 at [81]

[4] Ronneby Road Pty Ltd v ESCO Corporation [2016] FCA 588 at [66]

[5] (1995) 35 IPR 259