Kits and Packages

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Claims to kits, such as a "kit of parts..." or "a kit for use...", often fall into the category of combinations, as there may be a potential working interrelationship between the parts thereof, e.g. construction sets as toys, or for commercial use. When examining claims to kits, it is useful to consider whether the integers of the kit are defined in such a way which requires a particular working relationship between them if assembled or used. Where individual integers (even though they may be individually known) are so defined as to only be capable of assembly or use to form a new structure, or achieve a particular result embodying the inventive concept, then a potential working interrelationship should exist.

A kit of tools would not normally come into the category of a combination, as there would be no potential working interrelationship between the various sized tools of the same type, and the various tools of different types. Similarly, a set of golf clubs cannot qualify as a combination, irrespective of the game which might require the use of various clubs to play adequately.

Case Law

In National Research Development Corporation's Application (1988) AIPC 90-495, the hearing officer found that a claim to a kit for use in an assay, which comprised three components in separate containers, did not define an aggregation of integers having a potential working interrelationship.

In Wellcome Foundation Ltd v Commissioner of Patents 30 ALR 510, the High Court decided that the association of written instructions with a known chemical composition in a container was not patentable subject matter, there being no novelty in the container or the chemical composition. The principle of that decision was followed by the hearing officer in Re Schering Aktiengesellschaft (1990) AIPC 90–649 in concluding that claims to a kit, such as in the form of a known type of blister pack, of known components and incorporating separate dosage units, were not limited to the inventive concept. Thus, the separate items of the kit could be used according to the novel method of inducing labour or an abortion which was described in the specification, or could be used in an entirely different manner. By corollary, a kit will not lack patentable subject matter if its physical construction is such that it is only capable of normal use in such a way as to inevitably realise the concept of the invention. See also Ciba-Geigy AG (Durr's) Application [1977] RPC 83 and Organon Laboratories Limited's Application [1970] RPC 574, which were referred to in Wellcome.

In Bristol-Myers Company v L'Oreal (1988) AIPC 90-529, the inventive concept resided in a process for waving or straightening hair which included the in situ formation on the hair of an insoluble complex which had a conditioning effect. The hearing officer held that as the components of the package claims could be used in other (known) hair treatment processes, such claims were not limited to the inventive concept. The hearing officer also considered a package claim which included instructions on how to employ the contents of the container for waving or straightening hair, and found (following Wellcome) that mere writing cannot confer patentability.

Other Considerations

Difficulties may be experienced in relation to claims which define a package, container or the like, holding ingredients separately or in non-reactive admixture. Examples are:

  • substances A and B individually are inactive, however when mixed together will produce a glue or coating; and

  • substance A is for treatment of a condition in humans (or other animals) and substance B is for alteration of a side effect caused by the use of A.

In general, if A and B are both known and there is no novelty in the construction of the package, the claimed invention is a non-patentable collocation. However, there may be a potential working interrelationship where the components are to be used in a novel way and the construction of the package ensures they will be used in this way. Thus, where there is novelty in the sequential application of two compositions, a claim to a package of the two compositions so constructed as to ensure that in normal use such sequential application occurs, would constitute a true combination. Some guidance on alleged inventions of this type is provided in Unilever Ltd's Application (1976) AOJP 531 and Blendax-Werke's Application (1980) RPC 491.

Another situation in which a claim to a kit may be regarded as constrained to the inventive concept, and consequently considered to define patentable subject matter, is where one of the components is novel, or by the inclusion of words of limitation to a novel method, e.g. "when used" or "whenever used" (see "For Use", "When Used", etc).