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5.6.8.19 Useful (specific, substantial, and credible use)

Date Published

Overview

Under s18(1)(c), an invention is required to be ‘useful’.

Patents should not be granted for inventions that:

  • are not useful;
  • have no practical application; or
  • do not work.

The question of whether an invention satisfies the ‘useful’ requirement is considered in terms of:

  • the existing case law, which broadly says that the claimed invention must achieve the promised benefit; and
  • s7A of the Act, which says that an invention is not taken as useful unless:
    • the complete specification discloses a ‘specific, substantial and credible use’ for the claimed invention; and
    • this disclosure is sufficient for that use to be ‘appreciated by a person skilled in the relevant art’.

Examination practice

Examiners should take the following steps to assess usefulness:

  • construe the claims (see 5.5.4 Claims construction and claim types);
  • determine on balance of probabilities whether the claimed invention achieves the promised benefit; and
  • determine on balance of probabilities whether the complete specification discloses a specific, substantial, and credible use for the claimed invention.

See ‘Legal principles’ below for the main points of case law underlying this approach.

Construing the claims

Before asking whether the claimed invention is ‘useful’, the examiner needs to work out exactly what the claims are.

The rules of construction such as ‘Claims are clear’, and ‘Reject the absurd’ apply when construing the claims. In particular, a specification should not be construed in a way that any sensible person would appreciate would lead to unworkability when it could be properly construed as having a more limited meaning.

If a claim, properly construed, encompasses methods within its scope that will not produce the desired result, it will lack usefulness. This is the case even if the skilled person (‘skilled addressee’) would recognise which methods to avoid.

Examiners should carefully consider broad claims, claims with numerical ranges, and claims with alternatives. Everything that falls within the scope of a claim must be useful; otherwise the claim will lack usefulness.

Does the invention achieve the promised benefit?

The promised benefit of the claimed invention will often be found in the description, either explicitly or apparent through reading the specification.

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

  • does the invention do what the applicant (or patentee) intends it to do; and
  • is the end result itself useful for the purposes indicated by the applicant (the promised benefit)?

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 in the specification. 

Is a specific, substantial and credible use disclosed?

Section 7A states that the complete specification must disclose a specific, substantial, and credible use for the claimed invention. The use may be explicitly disclosed, or it may be implied so that the skilled person could appreciate it without difficulty.

Deficiencies under specific, substantial, and credible use will generally arise in one of two forms:

  • the assertion of a specific and substantial use is not credible; or
  • it is not apparent why the invention is useful. That is, the complete specification either:
    • 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 the skilled person.

Specific use

A ‘specific use’ is where the claimed inventions provides a well-defined and particular benefit to the public.

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.

The specific use requirement will not be satisfied if the use disclosed in the specification is:

  • so vague that it is meaningless; and/or
  • so broad that it merely indicates that an invention has been made, without indicating what the specific invention is used for.

For example, a class of chemical compounds may be described as ‘pharmaceutically active’, or the only use disclosed for an isolated DNA sequence may be as a ‘molecular marker’ or ‘gene probe’. These do not represent a specific use.

If no use is disclosed, the claimed invention may be only a scientific curiosity, discovery or idea. This possibility leads to the additional considerations of:

  • whether the claimed invention is a manner of manufacture (s18(1)(a)); and
  • whether the specification discloses the invention in a clear enough and complete enough manner (s40(2)(a)).

Substantial use

A ‘substantial use’ is an immediately available and significant real-world use. An ‘immediately available’ use is one that can be identified or reasonably confirmed without the need for further experimentation. A ‘significant real-world’ use is one that provides a benefit to the public, that is, the use is a desirable outcome based upon a concrete need in the art.

For example, a specification discloses a protein but provides no disclosure as to the use of the protein or any properties/advantages of the protein. There is no substantial use, as the specification discloses no real-world use for the claimed protein and further experimentation would be necessary to identify such a use.

Note that in general, where no substantial use is disclosed for the claimed invention, there will also be no disclosure of a specific use, and vice versa.

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.

Note with respect to claims that lack a credible use, they may also lack clear enough and complete enough disclosure (see Clear and Complete Disclosure - Contravention of laws of nature).

(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.

Usefulness objection

In general, objections that the claimed invention is not useful should be included in the ‘Other issues’ section of an examination report.

However, if this is combined with an s40 objection (such as lack of support) and the s40 objection is the primary objection, the usefulness objection should be included in the ‘Section 40’ part of the report.

In the ‘Summary of patentable subject matter’ section of the report, claims that lack usefulness but meet the manner of manufacture requirements should be included at the prompt ‘Which claims define patentable subject matter?’. Only claims that do not define a manner of manufacture should be included at the prompt ‘Which claims DO NOT define patentable subject matter?’.

Consideration of specific claim types

Dependent claims

In general, where the subject matter of an independent claim meets the usefulness requirements, a dependent claim (that is, narrower in scope but with similar subject matter) derived from the independent claim will also define a useful invention.

An exception to this general rule is where the use specified for the dependent claim differs from that of the independent claim. In this situation, the usefulness of the subject matter of the dependent claim should be considered on its own merits.

Alternatives in a Claim

Where there are alternatives within a claim, everything that falls within the scope of the claim must be useful. This means that each embodiment encompassed by the claim must achieve the promised benefit and the specification must disclose a specific, substantial and credible use for the whole of the subject matter claimed.

Numerical Ranges Within a Claim

When assessing claims containing numerical ranges, examiners should be mindful that everything falling within the scope of a claim must be useful.

The claimed invention should be taken to satisfy this requirement, unless there is good reason for a person skilled in the art to question whether the promised benefit would be achieved across the whole of the claimed range, and/or that the specification discloses a specific, substantial and credible use for the whole of the subject matter claimed.

Broad Claims

When assessing broad claims, examiners should note that everything falling within the scope of a claim must be useful. An objection should be taken where there is good reason for a person skilled in the art to question whether the claimed invention is useful across the full scope of the claim.

For example, if the claimed invention relates to a broad class of chemical compounds and the examples demonstrate that only some of the compounds will produce the desired result, then the claimed invention will not satisfy the requirement that it be useful.

Therapeutic or pharmacological use

Applications for therapeutic and pharmacological inventions often make broad assertions regarding their usefulness (for example, the mere assertion in the specification that a pharmaceutical composition can cure cancer).

Examiners should consider the statements in the specification, and any other evidence provided in support of an asserted therapeutic or pharmacological use, to determine if there is a reasonable correlation between the stated activity of a compound or composition and the use asserted in the specification. For example, the applicant may provide clinical data or evidence of a structurally similar compound known to have a particular therapeutic use.

A reasonable correlation between the stated activity and the asserted use is sufficient to establish usefulness. The applicant does not need to:

  • prove as a matter of statistical certainty that a correlation exists; or
  • provide evidence of efficacy in treating particular animals/humans where such a use is asserted.

However, claims directed to a method of treating or curing a disease for which there have been no previously successful treatments should be carefully reviewed for compliance with the usefulness requirements. The fact that there is no known cure for a disease does not necessarily lead to the conclusion that such an invention lacks usefulness. Examiners should determine if the asserted use for a claimed invention is credible based on the information disclosed in the specification.

Where there is doubt that the evidence provided in the specification establishes a credible use, evidence from experts in the field indicating that there is a reasonable expectation of success or submissions supported by sound reasoning, may be sufficient to establish that an asserted use is credible.

Note that where claims to methods of treatment do not meet the requirements for usefulness, examiners should also consider whether a lack of support objection applies (see Support - Pharmaceutical Inventions and Methods of Treatment).

Contravention of laws of nature

The fact that an invention is apparently contrary to the laws of nature is likely to result in an invention that is not useful. In particular, if it is clear that the invention cannot work as described in the specification, then the invention will lack a credible use and prima facie will not achieve the promise of the invention.

Inventions that contravene well-established laws of nature and are therefore non-operable, for example perpetual motion machines or ‘cold fusion’, will not satisfy the credible use requirement or the requirement that the claimed invention achieves the promised benefit.

Any objection that the claimed invention is not useful should explain why the claimed invention has no specific, substantial and/or credible use and/or why it will not achieve the promised benefit.

​​​​​​​​​​​​​​Other grounds of objection which examiners should consider are:


Legal principles

Does the invention achieve the promised benefit?

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 page 417 approved by the High Court in Advanced Building v Ramset (1998) HCA 19 at paragraph 24).

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 paragraph 20; William WM Wrigley Junior Company v Cadbury Schweppes Pty Ltd (2005) FCA 1035 at paragraph 138).

Everything within the scope of the claim must be useful

If a claim is 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 paragraph 20; Martin Engineering Co. and Another v Trison Holdings Pty Ltd and Others (1989) FCA 64 at paragraphs 23 and 24).

Specific use

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.

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 page 1371; 76 USPQ2d at pages 1225 and 1230 (Fed. Cir. 2005)).

Substantial use

  • ‘Substantial use’ means 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 pages 1371 and 1376; 76 USPQ2d at pages 1233 and 1234 (Fed. Cir. 2005)).

Credible use

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).

Amended Reasons

Amended Reason Date Amended

Published for testing
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