A safety system for protecting against the hazard of patent specification failure: sufficiency and support in Jusand v Rattlejack
A new non-statutory concept has been established this month in Australian Patent Law. The full bench of the Federal Court in Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd has incorporated UK common law doctrine into domestic statutory interpretation, affirming a new construction of s40 sufficiency and support requirements based on a ‘relevant range’ denoted by the ‘essence or core’ of the invention.[1]
The decision has significant ramifications for patentees, patent attorneys and other intellectual property stakeholders:
1. There is an increased burden on applicants and patent attorneys, who must expansively disclose the full scope of an invention where it relates to a core functional aspect. This must be meticulously done such that a person skilled in the relevant art would be able to perform the invention without undue burden or inventive step.
2. There is a warning not to claim elements outside the ‘essence or core’ of the invention; things which are not directly related to the inventive step or technical contribution to the art.
3. Defendants in infringement proceedings have two new, more powerful weapons to deploy in cross-claiming for revocation.
These considerations must be carefully balanced as to avoid patent invalidity and reflect a shift toward international benchmarks following our Raising the Bar Act.[2] Jusand displays the importance of precisely meeting both statutory and non-statutory requirements surrounding sufficiency and support, which have clear potential to revoke or limit patent claims. This underscores the importance of professional and thorough patent drafting.
Case details
Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (‘Jusand’) was a matter heard in the Federal court of Australia before Perram, Nicholas and McElwaine JJ.[3] The hearing took place from 14-15 November 2022, and the parties were Jusand Nominees Pty Ltd (plaintiff) and Rattlejack Innovations Pty Ltd (defendant).
Facts
Jusand Nominees brought infringement proceedings against four respondents, including Rattlejack Innovations, in relation to Patent No. 2019100556 (Safety System and Method for Protecting Against a Hazard of Drill Rod Failure in a Drilled Rock Bore).[4] Jusand claimed that Rattlejack’s product ‘SafetySpear’ had infringed their innovation patent; Rattlejack cross-claimed for revocation of the patent. At first instance, the trial judge held that Jusand’s patents were unenforceable and to be revoked on the grounds of insufficiently describing the full scope of the invention and inadequate support provided by the specification under the Patents Act 1990 (Cth).[5] Jusand appealed the decision and commenced proceedings in the Full Court of the Federal Court of Australia.
Issues
There were three issues apparent to the Court on appeal:
· the proper construction of claim 1;
· whether the SafetySpear infringes this claim, properly construed; and
· the validity of the patent depending on appropriate support and sufficiency.[6]
The third issue has demonstrated the effectiveness of support and sufficiency in a cross-claim attack on a patent specification.
Perram J considered the validity of Jusand’s patent with regard to the sufficiency and support requirements amended by the Raising the Bar Act.[7] His Honour addressed whether Jusand’s patent specification disclosed the invention clearly and completely enough for it to be performed by a person skilled in the art, and whether the claim was supported by the content of the specification.[8]
Decision
The Court dismissed the appeal with costs, upholding the trial judge’s findings.[9] Each of Jusand’s infringement claims were disregarded and the patent was declared invalid, re-affirming its revocation.[10] Damages were not assigned or quantified.
Special Leave to appeal to the High Court was rejected on the grounds that Jusand’s appeal did not have sufficient prospects of success and the matter was not a suitable vehicle for the point of principle to be considered.
Sufficiency
The Court considered whether Jusand’s patent specification adequately disclosed the invention according to s 40(2)(a), such that a person of relevant skill could perform it “without inventive skill or undue burden”.[11] As it was held that this disclosure obligation only applied to a ‘relevant range’ of the invention’s performance, His Honour interpreted the legislation in light of the Raising the Bar Act and its objective to greater align Australian intellectual property law with ‘other major jurisdictions’, specifically the United Kingdom.[12] Regeneron Pharmaceuticals Inc v Kymab Ltd[13] and Illumina Cambridge Ltd v Latvia MGI Tech SIA[14] were hence examined following consideration of the influential UK statutory provisions.[15]
While considering Regeneron, Lord Briggs’ ‘relevant range’ test was detailed to include variables with significant bearing on a product’s value or utility in relation to its intended purpose.[16] These principles were expounded in Illumina to outline a relevant range with regard to the “essence or core of the invention.”[17] Perram J accepted Birss J’s explanation that the essence or core is “closely related to the technical contribution and/or the inventive concept”, framing his reasoning accordingly.[18]
The Full Court affirmed the trial judge’s distinction that Jusand’s innovative step was the “idea of converting downward weight force into lateral braking force using the interaction of an anchor member with a tapered impact reduction member.”[19] It was also held that the technical contribution to the art was explaining how to implement that idea in a Safety System using steel.[20] More broadly regarding product claims, the technical contribution is the product itself, not the inventive step.[21]
The Full Federal Court concluded that Jusand’s patent lacked sufficiency because other plausible construction materials (beyond steel) fell within the ‘relevant range’ and were not adequately disclosed in the specification. Consequently, because the choice of material significantly impacted the utility of the invention for its purpose (found in the essence or core), it falls within the ‘relevant range’ under Regeneron.[22] His Honour reinforced that for sufficiency to be met, the materials within the range must be able to be selected and implemented without undue burden or inventiveness on a person skilled in the art. In Illumina, Birss J used the analogy of a teapot – a new inventor of a teapot would be able to identify and test suitable materials without undue burden or inventiveness, stating that “China would work, and chocolate would not”. The Court distinguished the present facts from Illumina on the following grounds: the technical complexity of constructing Jusand’s Safety System from different materials was held to impose undue burden and inventiveness on a relevant person; they would be starting “from scratch” since the materials involved some technical complexity and functional impact.[23]
Support
The Court briefly considered the support element of s 40(3), considering that on the facts it did not differ in application.[24] Perram J outlined that the issue of how to construct the safety system is a separate issue to the idea of converting downward force into lateral braking force.[25] Accordingly, the patent failed to address this problem across the relevant range of materials, exceeding the technical contribution to the art. It was held invalid to grant a monopoly over Safety Systems which Jusand “ha[d] simply not invented.”[26] The matter was determined to be indistinguishable from Regeneron in this regard and was dismissed on the grounds of insufficiency and lack of support.[27]
Important Obiter Dicta
With regard to the sufficiency requirement in s 40(2)(a) and support requirement in s 40(3), Perram J affirmed their relationship as “two sides of the same coin”, while acknowledging their potential to provide differing lenses through which a claim may be assessed.[28]
Jusand concerned a patent related to a product claim, but the Court held that in a method claim, the patent’s technical contribution to the art is “the explanation of how to perform the method”.[29] Perram J explained that the inventive step may be an element of the technical contribution, but the two concepts were to be ordinarily distinguished.[30]
Conclusion
The decision in Jusand marks the first post-Raising the Bar appellate decision that considered the non-statutory tests for sufficiency and support. We are yet to see how Jusand will be interpreted and applied by other courts and IP Australia, but it is clear that sufficiency and support elements should not be trivialised. Rather, they should be given serious consideration in patent specifications.
by William Jameson, Lester Miller and Ronelle Geldenhuys
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[1] Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (‘Jusand’).
[2] Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (Cth) (‘Raising the Bar Act’).
[3] Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2023] FCAFC 178 (‘Jusand’).
[4] Jusand (n 1) [1]; AU Patent Application No 2019100556, filed on 24 May 2019 (Expired on 12 November 2023).
[5] Jusand Nominees Pty Ltd v Rattlejack Innovations Pty Ltd [2022] FCA 540; Patents Act 1990 (Cth) s 40(2)(a), 40(3).
[6] Jusand (n 1) [2].
[7] Ibid; Raising the Bar Act (n 2) s 7, 9.
[8] Patents Act (n 5) s 40(2)(a), s 40(3).
[9] Jusand (n 1) [225].
[10] Ibid [2], [225].
[11] Ibid [157].
[12] Ibid; Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 [2012] (Cth) 43.
[13] [2020] UKSC 27 (‘Regeneron’).
[14] [2021] EWHC 57 (‘Illumina’).
[15] Jusand (n 1) [167]-[177].
[16] Ibid [186], quoting Regeneron (n 13) [56].
[17] Ibid [189], quoting Illumina (n 14) [279(iv)].
[18] Ibid [190], quoting Illumina (n 14) [277].
[19] Ibid [215].
[20] Ibid.
[21] Ibid [204].
[22] Ibid [ 217].
[23] Ibid [219].
[24] Ibid [222].
[25] Ibid [223].
[26] Ibid [222].
[27] Ibid [224].
[28] Ibid [155], citing Merck Sharp & Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477.
[29] Ibid [205].
[30] Ibid.