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Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed on or after 15 April 2013.
  • innovation patents with an examination request filed on or after 15 April 2013.
  • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see Useful (Utility).

The test for determining whether a claimed invention achieves the promised benefit is to ask:

Does the invention do what it is intended by the [applicant or] patentee to do and is the end result itself useful?

“‘Useful for what?’ is a question which must always be asked, and the answer must be useful for the purposes indicated by the [applicant or] patentee.”

This does not mean that an invention must equate to a commercial product in order to be useful, rather it must achieve the use promised by the patentee in the specification. (Lane Fox v Kensington and Knightsbridge Electric Lighting Co (1892) 9 RPC 413 at 417 approved by the High Court in Advanced Building v Ramset [1998] HCA 19 at [24]). In particular, the promised benefit or useful purpose of the claimed invention will often be found in the description.

When construing the claims for the purposes of usefulness (or for any other purpose), they must be construed from the perspective of a skilled addressee in a commonsense way, and not in such a way that the skilled addressee would appreciate would lead to an absurd or unworkable result (see 2.11.5 Claims are Clear and Reject the Absurd). A specification should not be construed in a way that any sensible person would appreciate would lead to unworkability when on a proper construction it could be given a more limited meaning. (Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91 at [20]; William WM Wrigley Junior Company v Cadbury Schweppes Pty Ltd [2005] FCA 1035 at [138]).  

However, if a claim, properly construed, includes within its scope means that will not produce the desired result, even if a skilled addressee would recognise which means to avoid, then the claim will lack usefulness. That is, everything falling within the scope of a claim must be useful, otherwise the claim will fail for inutility (Norton and Gregory Limited v Jacobs (1937) 54 RPC 271 at 276 cited by the High Court in Welch Perrin & Co Pty Ltd v Worrel [1961] HCA 91 at [20]; and Martin Engineering Co and Another v Trison Holdings Pty Ltd and Others [1989] FCA 64 at [23]-[24]).

Any objection that the claimed invention is not useful should include a reasoned explanation of why the claimed invention does not achieve the promised benefit and/or why the specification does not disclose a specific, substantial and/or credible use for the claimed invention.

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