Australia: Court finds claims lack utility for not satisfying a composite promise in a patent specification

Last Updated: 14 June 2016
Article by Charles Tansey and Michael Zammit

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 questions2: "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 Ltd5, 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

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Charles Tansey
Michael Zammit
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.