Claiming by Result

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed before 15 April 2013.  
  • innovation patents with an examination request filed before 15 April 2013.
  • innovation patents where the Commissioner decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see Claiming by Result.

A claim may define a product by reference to its resulting properties rather than its structure.  Under Australian law, claims by result are allowable if the invention described lies in the result itself (in which case the claims can properly define all ways of achieving that result). This principle was stated in Shave v H V McKay Massey Harris Pty Ltd (1935) 52 CLR 701:

"When a combination claim states an invention which gives an old result by a new means, the monopoly is limited, at any rate prima facie, to the new means. But when by a new application of principle the inventor has obtained a new result or thing, even when it be done by a combination, he may claim all the alternative means by which the thing or result may be achieved."

In Lockwood v Doric (2004) 217 CLR 274, the invention related to a key controlled lock with a double actuating mechanism (dead lock).  The court agreed with the trial judge’s findings (paragraph 29) that, on the evidence provided, the principle of releasing the inner actuator when the outer actuator was unlocked was new.  The High Court therefore found that such a mechanism was a “new result” and hence claims to any means of achieving that result were fairly based.

Using those same principles, it also follows that where (on a true construction of the specification), the result is a known (or desired) goal, then the invention will not lie in the result itself, but in the means of achieving that result.  Claims to “all means” in these cases travel beyond the subject matter of the invention and will not be fairly based.

Note: A claim by result cannot usually be said to lack fair basis merely because it is a claim by result.  Such a claim can usually only be objected to for lack of fair basis where the invention described in the specification relates to achieving a well known objective or goal, and the specification describes a particular means of achieving that well known objective or goal.

Claims Not Fairly Based

In Olin Corporation v Super Cartridge Co Pty Ltd (1977)180 CLR 236, the invention disclosed was a particular method of producing a one piece plastic shot shell case having uniform and increased strength in the side walls.  The High Court found (at paragraph 47) that the shell case itself had been “recognised generally” to be a necessary or desirable development.  The resulting shell case (having particular properties) was therefore not a “new principle” and claims to the shell case itself were not fairly based.  

In Montecatini Edison SpA v Eastman Kodak Co (1971) 45 ALJR 593 (at page 646), the Court found that it was well known that new polypropylenes with new properties might be produced.  The true invention was found to reside in the method of making a new polypropylene using a new catalyst rather than the new propylene itself.  Claims to the new polypropylene per se (unlimited to the inventive method) were therefore found not to be fairly based.