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ARTICLE · 21 SEPTEMBER 2017

Always give your best (method) - in a patent application

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Applicants must ensure that the description of embodiments in a patent specification is updated prior to filing.

AustraliaIntellectual Property
Andrew Lowe
Andrew Lowe
Russell Davies
Russell Davies
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Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd [2017] FCAFC 138

Summary

  • Applicants should include the best method(s) of performing the invention known at the time of filing a patent application, withholding better or superior embodiments or features can result in invalidity of the granted patent.
  • Novelty destroying prior use does not always need to be corroborated by contemporaneous documentary evidence.
  • Experts need to be carefully selected as an unsuitable expert will be less persuasive on inventive step issues.
  • Claims are invalid for inutility where they include embodiments that are not useful.

Background

This is a decision of the Full Federal Court of Australia (FFC) on an appeal from a judgement at first instance on the validity of Australian Patent Number 744870 (the Patent) in the name of Sandvik Intellectual Property AB (Sandvik) and its alleged infringement by Quarry Mining & Construction Equipment Pty

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