With the dust still settling in the aftermath of the recent controversial decision of the Full Federal Court in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (Jusand), the Australian Patent Office (APO) has applied this decision in finding in favour of CQMS in its opposition to the granting of ESCO’s Australian Patent Application No. 2018201710 (the Application) in CQMS Pty Ltd v ESCO Group LLC [2024] APO 17 (CQMS).
The CQMS decision serves as a harbinger that the APO is willing and ready to apply the concept of a “relevant range”, which was endorsed by the Full Federal Court in Jusand and its ramifications discussed in our recent article, when assessing the sufficiency (and support) of mechanical patent claims. It also highlights the problems with Australia’s “promise of the invention” approach to assessing utility, and that the APO has the discretion to raise these (and any other) grounds independently of the parties in opposition proceedings.
Background
The CQMS decision is the latest in a series between ESCO and CQMS, with the Application being a divisional application of a (now granted) parent patent that was also opposed by CQMS. CQMS is also opposing several of the co-pending divisional applications.
The Application is broadly directed to systems and methods for monitoring the status, health, and/or performance of wear parts used on various kinds of earth working and excavation equipment. Relevantly, claim 1 is in the following terms:
A bucket for use with excavating equipment comprising walls defining a containment portion for gathering earthen material to be excavated, a digging edge, wear parts secured to the digging edge, and at least one electronic sensor for producing an image, and secured to one of the walls to monitor the health of the bucket and wirelessly transmit the monitored information. [emphasis added]
At the hearing, CQMS pressed the following grounds of opposition against ESCO: lack of novelty; lack of inventive step; and lack of sufficiency and support. However, what makes this case particularly notable is that two months after the hearing and following publication of Jusand, the Hearing Officer wrote to both parties raising two additional issues that had not been raised by CQMS, namely, that:
- the claims lacked sufficiency because they included a “relevant range” that encompassed embodiments that were not sufficiently enabled by the description; and
- the claims lacked utility because the claims failed to meet the “promise of the invention”.
Sufficiency and Support Requirements
Under Australian law, for patents and patent applications for which examination was requested on or after 15 April 2013, a specification must disclose the claimed invention in a manner that is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art (Sufficiency Requirement).[1] Effectively, this means sufficient information must be provided to enable the whole width of the claimed invention to be performed by the skilled person without undue burden, or the need for further invention.
The claims must also be supported by matter disclosed in the specification (Support Requirement).[2] Effectively, this means there must be basis in the description for each claim and the scope of the claims must not be broader than is justified by the extent of the description, drawings and contribution to the art.
As explained in our previous article, the intention of the legislature when introducing the Sufficiency and Support Requirements was to align Australian law with equivalent requirements in overseas jurisdictions, such as the UK.[3] The Jusand decision confirmed that this includes the application of UK case law that was not contemplated at the time the Sufficiency and Support Requirements were introduced, including the UK Supreme Court decision in Regeneron Pharmaceuticals Inc v Kymab Ltd [2020] UKSC 27 (Regeneron).
Regeneron gave rise to the concept of a “relevant range”, which is any (explicit or implicit) range within a claim that “significantly affects the value or utility of the product in achieving the purpose for which it is to be made”. Where the claims encompass such a range, it is necessary for the specification to provide sufficient disclosure to enable a person skilled in the art to make any and all “plausible” embodiments within that range without undue burden or further invention; in such circumstances, relying on a principle of general application will not suffice.
Up until recently, there had been little (if any) jurisprudence as to how the Sufficiency Requirement would be applied to mechanical inventions. However, Jusand established that the concept of a “relevant range” poses a significant risk to inventions across all technologies, including mechanical-type inventions.
The Utility Requirement
Under Australian law, the invention must have utility in that it must have a “specific, substantial and credible use” and that it must achieve the promised benefit (collectively, the Utility Requirement).[4]
The “promise of the invention” is derived from the specification as a whole, and the claimed invention must achieve the promise across the entire scope of the claim. Accordingly, any embodiment within the scope of the claim that does not meet the “promise of the invention” provided in the specification can invalidate the claim for lack of utility.
According to the Federal Court in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 4) [2015] FCA 651:
The primary utility consideration is whether the invention as claimed will achieve the result promised by the specification, the result itself being useful. However, it must be recognised that if the appropriately skilled addressee is able to supply an omitted feature, which is part of the common general knowledge, then provided the invention achieves the promise with that feature supplied, the claim will not lack utility. [emphasis added]
Importantly, where the specification provides multiple promises of the invention, the claimed invention must satisfy all of these promises in order to satisfy the Utility Requirement. This is a particularly onerous obligation for patent applicants who may not be aware of Australia’s strict Utility Requirement when drafting their specifications, and inadvertently draft their specifications in a manner that requires all such promises to be met.
The CQMS Decision
While deciding that the claims did not lack novelty or an inventive step, the Hearing Officer found that the claimed invention was not fully enabled or useful across its entire scope, with the claims falling short of both the Sufficiency Requirement and the Utility Requirement.
The “relevant range” issue
With reference to the Sufficiency Requirement, the Hearing Officer contended that the manner in which the sensor was mounted to the bucket constituted a “relevant range” per Jusand and Regeneron, and that the description failed to sufficiently describe how the sensor was mounted in a manner robust enough to operate in a typical excavating environment. The Hearing Officer asked both parties to provide submissions on this issue.
On its part, ESCO took the position that Jusand did not substantially redefine the Sufficiency Requirement in Australia, instead directing the Hearing Officer to the APO decision arising from the opposition to the parent patent, in which the disclosure of the specification was considered sufficient to enable claims of generally similar scope. ESCO also referred to another UK precedent in Illumina Cambridge Ltd v Latvia GI Tech [2021] [2021] EWHC 57 (Pat); RPC 12 to support a contention that the language used to describe the mounting of the sensor was not, per se, a “relevant range” in that it was descriptive and did not significantly affect the invention from achieving its purpose.
In contrast, CQMS asserted that not only did the description fail to sufficiently enable the full width of the claims, but the description also failed to sufficiently enable anything within the scope of the claims. CQMS argued that the present matter was analogous to Jusand and that it would take undue experimentation on behalf of a skilled person to develop a suitably robust mounting arrangement.
The Hearing Officer contrasted what he considered to be an overall lack of discussion in the specification as to the sensor mounting arrangement with the weight of expert evidence put forward at the hearing (including that of ESCO’s own expert in support of its inventive step case). The evidence suggested that it was not commonplace in the art to attach a sensor to the wall of an excavator bucket and that the manner and location of such sensor attachment in a suitably robust manner did not from part of the common general knowledge in the art (CGK). In that regard, the Hearing Officer stated:
… an invention cannot be fully enabled if all means of achieving something (in this case, attachment of a sensor to a bucket operating in an extreme environment) have been claimed where there is specific evidence that states that such an outcome cannot be achieved without using ingenuity in overcoming the challenges that would arise in doing so. [emphasis added]
Accordingly, the Hearing Officer found that the Sufficiency Requirement had not been satisfied.
The “promise of the invention” issue
With reference to the Utility Requirement, the Hearing Officer contended that the specification provided several promises of the invention, namely:
- monitoring the health of the bucket by a monitoring system having an image sensor which detects the amount of wear in a wear part and which also detects when a wear part has detached;
- protection of the bucket or improved performance via the supply of timely warnings to replace wear parts; and
- protection of downstream equipment due to early detection of lost wear parts.
In view of the expert evidence adduced by the parties, the Hearing Officer considered it clear that “where the sensor is protected and has features that address issues of excess dust or debris (when needed) … the system would satisfy the above promises”. Conversely, when the sensor had no such protection, the Hearing Office considered that the sensor was likely to be damaged and, as a result, “the monitoring system would be rendered non-functional”.
ESCO sought to argue that the suitability of the sensor (and therefore its freedom from damage of obscuration) was ensured by the use of the expression in the claims that the sensor is “for producing an image”. However, the Hearing Officer disagreed, stating:
… Grammatically, the word “for” encompasses nothing else other than the functionality of the sensor. … the claim excludes from its scope any sensors that do not produce an image, but does not exclude sensors that would not be suitable for monitoring in the sense of operating over a period of time, such as the useful life of a wear part.
As noted above, the Hearing Office did not consider the suitable mounting of a sensor on the wall of an excavator bucket to be part of the CGK. It followed that the manner in which the sensor was to be protected from damage or obscuration to allow useful images to be taken was an essential feature of the invention that needed to be derivable from the specification and included in the claims.
Accordingly, this knowledge could not be attributed to the skilled person for the purpose of establishing utility and, as such, the Hearing Officer found that the claims failed to satisfy the Utility Requirement.
Takeaways
The outcome in CQMS demonstrates a clear intention of the APO to apply the findings of Jusand to mechanical inventions, and provides useful guidance as to how the “relevant range” concept is likely to be applied to mechanical-type patents by the APO. It is apparent that the scope for application of this decision is broad, and the concept of a “relevant range” is likely (at least in the immediate aftermath of Jusand) to be applied zealously by the APO across all technologies until such time as further judicial guidance is provided. To date, the APO has not issued any guidance on how it intends to apply this concept in a consistent fashion, but we will continue to monitor this issue as it progresses and provide updates accordingly.
The CQMS decision also serves as an important reminder of the very real risk of running afoul of the “promise of the invention” approach to utility where the necessary features to achieve the promise are neither included on the claims, are not derivable from the specification and do not form part of the CGK.
Patent applicants and legal practitioners should ensure that all new patent specifications disclose inventions clearly and completely, and take particular care when preparing claims with descriptive or functional language to safeguard that all plausible embodiments falling within a relevant claims range are sufficiently enabled within the description. In addition, promises – especially multiple promises – of the invention should be carefully worded such that not all purported promises need necessarily be met by all embodiments of the claimed invention.
Seeking appropriate local advice on these issues during drafting, examination and/or before any third party challenges arises may assist with addressing these issues before it is too late. It is also important to note that Hearing Officers have the discretionary power to the raise these issues during pre-grant opposition proceedings in the event they are not advanced by the opponent.
If you have any questions in relation to this decision, please contact Ben Dziekan (bdziekan@dcc.com) or Claire Gregg (cgregg@dcc.com).
[1] Patents Act 1990 (Cth), s 40(2)(a)
[2] Patents Act 1990 (Cth), s 43(3)
[3] Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011
[4] Patents Act 1990 (Cth), ss 18(1)(c) and 7A; Explanatory Memorandum