Protecting Innovation with Commercially Focused Patent Claims

It is vitally important in today’s competitive market for businesses to invest in research and development of new and improved products in order to stay one step ahead of competitors. However, without adequate IP protection, new developments derived from such investment in time, resources, and no small amount of money, are vulnerable to exploitation by competitors.

Patents play a key role in protecting inventions by providing a patent owner with the exclusive right to prevent others from exploiting the invention defined in the claims of the patent. It is therefore vital that the claims are carefully drafted to provide commercially useful protection and serve the strategic aims of the patentee’s business.

A patent will usually include a detailed description of not only the preferred embodiment of an invention, but also alternative embodiments and variations. This provides a basis for the invention to be claimed in broad terms which encompass all embodiments and variations. However, a broad claim may be difficult to obtain in view of the correspondingly broader range of prior art available. The scope of the claims may therefore need to be narrowed to distinguish the claimed invention from the prior art, for example, by directing to the claims to a specific embodiment described in the patent.

The downside in restricting the scope of the claims is that a competitor may be able to engineer around the patent by creating a modified version of the product which avoids infringement. It is therefore important to choose claim language carefully and think about how a competitor will try and work around the patent.

In addition, it is important to consider the claims in view of the end product being commercialised. Products often undergo rigorous testing, modification and fine tuning in the lead up to commercial launch, which is sometimes years after a patent application is filed. The patent is of questionable value if the claims do not encompass the commercialised product.

The need for careful choice of claim language was demonstrated in Australian Mud Company v Coretell Pty Ltd (Australian Mud Company Pty Ltd v Coretell Pty Ltd [2011] FCAFC 121).

Australian Mud Company Pty Ltd was the patentee of Australian Innovation Patent No. 2006100113. The claims of the patent were directed to an orientation device for providing an indication of the orientation of a core sample obtained by geological drilling.

Coretell Pty Ltd had an apparatus which provided the same functionality as the orientation device claimed in the patent. However, the apparatus consisted of two components, namely a downhole component and a handset component which remained at the surface. At issue was whether the use of the word ‘device’ in the claims resulted in the claims being limited to an orientation tool of unitary construction, or encompassed an orientation tool consisting of separate parts.

The earlier first instance Federal Court decision held that Coretell did not infringe the patent, as the word ‘device’ in the claims was found to be a reference to a unitary construction. In the subsequent Federal Court appeal, Australian Mud argued that the primary judge erred in his claim construction by reading into the claims glosses drawn from the body of the specification, namely that the device was of unitary construction. The best method of performing the invention was described in the specification with reference to a specific embodiment, which both parties agreed was an orientation device having a single, unitary assemblage.

Coretell put forward that a proper construction of the claims required consideration of all of the words of the claims, rather than merely focussing on the word ‘device’. The Full Court accepted Coretell’s submissions regarding claim construction because, in contrast to the construction for which Australian Mud argued, Coretell’s construction provided a consistent meaning to the word ‘device’ throughout the claims.

The Court upheld the decision of the primary judge finding that he properly construed the claims in the context of the invention with no reference from the body of the specification being imported into the construction of the claims.

In addition to the highlighting the critical importance of carefully selecting the language used in patent claims, the decision serves as a reminder of the importance of describing multiple embodiments in a specification, and drafting claims in a manner which captures all embodiments and workable modifications of an invention which commercial competitors may otherwise implement to avoid infringement. The decision at first instance and the subsequent appeal decision also highlight that claims of innovation patents are not necessarily the silver bullet that patentees might expect, and that judges may well read features of patent claims narrowly as some compensation against the low innovative step threshold for a valid claim.

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