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2.9.3.4.1.2A Specific, Substantial and Credible Use

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 2.9.3.4 Useful (Utility).


Overview

Section 7A of the Act relevantly provides that:

  1. For the purposes of this Act, an invention is taken not to be useful unless a specific, substantial and credible use for the invention (so far as claimed) is disclosed in the complete specification.
  2. The disclosure in the complete specification must be sufficient for that specific, substantial and credible use to be appreciated by a person skilled in the relevant art.

The intent of the legislature is that ‘specific’, ‘substantial’ and ‘credible’ be given the same meaning as is currently given by the US Courts and the USPTO.

The specific, substantial and credible use for the claimed invention must be disclosed in the complete specification. There may be an explicit disclosure of use. Alternatively, a formal statement of use is not necessary if the person skilled in the art could appreciate the use, with their background knowledge in the art and without difficulty.

In general, deficiencies under the specific, substantial and credible use test will arise in one of two forms. The first is where it is not apparent why the invention is useful, i.e. the complete specification fails to disclose any specific and substantial utility for the invention or fails to disclose enough information about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. The second arises in the rare circumstance where an assertion in the specification of a specific and substantial utility is not credible.

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.



Specific Use

To have a specific utility, the claimed invention must be able to provide a well-defined and particular benefit to the public. (Principle derived from the US Court judgement In re Fisher, 421 F.3d 1365 at 1371; 76 USPQ2d at 1225, 1230 (Fed. Cir. 2005)).

In most circumstances, the specification will explicitly disclose a specific use for, i.e. an application of, the claimed invention and thus satisfy this requirement.  Alternatively, a specific use for the claimed invention will be implicitly disclosed if such a use would be readily apparent to the skilled addressee reading the specification.

However, where the specification discloses a use so vague as to be meaningless, or a general use so broad that it merely indicates that an invention has been made without disclosing what that specific invention is, an objection should be taken that a specific use has not been disclosed and would not otherwise be apparent to the person skilled in the art reading the specification.

For example, a class of chemical compounds may be stated to be “pharmaceutically active” or the only use disclosed for an isolated DNA sequence may be as a “molecular marker” or “gene probe”. Such uses do not represent a specific use.

Where no use is disclosed in the specification, either explicitly or implicitly, the claimed invention may be directed to a mere scientific curiosity, discovery or idea. In such cases, the specific use requirement has clearly not been met and examiners should also consider whether the claims are directed to a manner of manufacture (sec 18(1)(a)), as well as whether the specification discloses the invention in a clear enough and complete enough manner (sec 40(2)(a)).


Note: In general, where no specific use is disclosed for the claimed invention, there will also be no disclosure of a substantial use providing an immediately available, significant real-world benefit to the public.


Substantial Use

To satisfy the substantial use requirement, the specification must disclose a use for the claimed invention that corresponds to an immediately available, significant real-world use (Principle derived from the US Court judgement In re Fisher, 421 F.3d at 1371, 1376; 76 USPQ2d at 1233-34 (Fed. Cir. 2005)).

The substantial use must be immediately available. Therefore, where it would require further experimentation to identify or reasonably confirm a real-world use for the claimed invention, then the substantial use requirement is not satisfied.

A significant real-world use can be viewed as providing a real-world benefit to the public, i.e. the use is a desirable outcome based upon a concrete need in the art.


Note: In general, where no substantial use is disclosed for the claimed invention, there will also be no disclosure of a specific use providing a well-defined and particular benefit to the public.


Credible Use

To determine whether the credible use requirement is satisfied, examiners should consider whether a person skilled in the art would accept that the use disclosed in the specification for the claimed invention is logical and consistent with the state of the art.

If the logic and facts provided in the complete specification, and any evidence provided by the applicant in response to an objection, would convince the person skilled in the art that the use asserted for the claimed invention is plausible or reasonably credible, then the credible use requirement will be met.

However, if based on the facts of the case, it is clear that the invention cannot work as described in the specification, then the invention will lack a credible use. For example, inventions that contravene well-established laws of nature and which as a consequence are non-operable (for example perpetual motion machines or ‘cold fusion’), will not satisfy the credible use requirement.

(Principle derived from the US Court judgements Newman v. Quigg, 877 F.2d 1575, 1581, 11 USPQ2d 1340, 1345 (Fed. Cir. 1989); In re Harwood, 390 F.2d 985, 989, 156 USPQ 673, 676 (CCPA 1968)).



Examples – Specific, Substantial and Credible Use


  1. The specification discloses a protein by way of its sequence (SEQ ID NO: 1) and indicates that the protein can be made by protein expression techniques known in the art. There is no disclosed use and no description of the chemical or biological properties of the protein.

Claim 1. The isolated protein consisting of SEQ ID NO:1.

Claim 1 does not satisfy the specific and substantial use requirements. There is no specific use, since no use has been disclosed in the specification and insufficient information is provided about the invention to make its usefulness immediately apparent to those familiar with the technological field of the invention. There is no substantial use since the specification discloses no real-world use for the claimed protein and further experimentation would be necessary to identify and attribute such a use.

2. The specification relates to the prevention or retardation of ageing by administering compound A. There are no examples in the specification that demonstrate that the compound prevents or delays ageing.

Claim 1. A method of preventing or retarding ageing by administering compound A.

The claim meets the requirements of having a specific and substantial use, however it does not satisfy the requirement that the asserted use is credible. This is because no material has been found to date which would be expected to prevent or retard ageing and there are no examples or evidence in the specification that provide credibility to the claim.


Note: If the specification had provided evidence that compound A could be used to treat factors associated with ageing such as skin wrinkles, then a claim to a method of treating the symptoms of ageing would satisfy the specific, substantial and credible use requirements.


3. The specification relates to the transfer of information at speeds faster than the speed of light.

Claim 1. A method of transferring information at greater than the speed of light.

The claim meets the requirements of having a specific and substantial use, however it does not satisfy the requirement that the asserted use is credible. This is because the claimed invention contravenes the well-established theory of special relativity.


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