Redefine utility for grant of a patent specification to remove 'promise of the invention' as a ground for rejection

Issue summary

The Raising the Bar Act introduced a requirement that in order to be considered useful, a 'specific, substantial and credible use' for the claimed invention must be disclosed in the specification. However, the Explanatory Memorandum to the Act indicated that this was not intended to override or change the existing case law that a claim could lack utility if the 'promise' of the invention made in the specification is not met.

In the light of the definition of utility in section 7A, the case law requirement for 'promise' of the specification to be met could be unnecessary and unduly onerous to patentees. Review of the requirements for utility in the Patents Act could determine if this aspect of utility is still required in Australia.

History

• On Hold 24 August 2018
• Reviewed August 2020

Comments

IP Australia doesn't have sufficient evidence of a problem to justify action at this time. IP Australia is monitoring the issue, and would welcome any relevant evidence from stakeholders.

Priority reviewed after Patents Consultation Group proposed higher priority.