8.7.3.16 Distinction Between Lack of Full Description, Inutility and False Suggestion

Key Legislation

Key Related Topics 

During the examination of an application, difficulties may arise as a result of confusion between the considerations of full description and utility, and occasionally, false suggestion.

Utility

The ground of utility is only available after acceptance of an application, i.e. in opposition or revocation proceedings. The scope of utility differs significantly between jurisdictions, and some objections raised in Australia under the ground of full description are dealt with in other jurisdictions as a lack of utility. Hence it is important to have some understanding of the nature of the ground of utility in Australia and its distinction from full description.

In Valensi & Another v British Radio Corporation Ltd. (1973) RPC 337 it was stated that to prove inutility, it is necessary to show that an invention so far as claimed, will not work as described or with any modification which the addressee can properly be expected to make. On the other hand, if a proposed modification which would make the invention work as described, is one which the addressee of the specification cannot be expected to make, then the invention is not fully described.

In Tetra Molectric Ltd.'s Application (1977) RPC 290 at page 297, the Court of Appeal distinguished inutility and lack of full description simply, by stating that:

"If you cannot achieve the promised result because of deficiencies in the information given in the specification, there is {lack of full description}. But if, following that information and having achieved mechanically that which the specification promises you will achieve by so following it, the end product will not of itself achieve that promise, then that is inutility."

False Suggestion

"False Suggestion" is only available as a ground of revocation and arises if the grant of a patent occurs as a result of a representation that is false. The false representation needs to have been a material factor in the decision to grant the patent. The motives behind the false suggestion are irrelevant. In particular, an intention to make a misrepresentation is not required; the mere fact of the misrepresentation is sufficient (Décor v Dart (1988) 13 IPR 385).

Where an applicant makes representations relevant to the acceptance of an application and an examiner has serious doubts regarding those representations, but is unable to contradict them, the case should be referred to a supervising examiner.  Where the supervising examiner is in agreement, the case should be referred to Patent Oppositions.