A patent is infringed if the invention is exploited without authorisation by the patentee.
There were two main items which were decided on that we will discuss today.
- Was the invention sufficiently disclosed?
- Was the use for “experimental purposes”?
In 2012, amendments were introduced into the Patents (Raising the Bar) Act that there is an experimental use exemption that avoids infringement. This is covered by the new Section 119C which was introduced into the Patents Act.
The principal behind this was to enable and not stifle “progress” by allowing for reasonable experimentation of an existing patented invention. This way, improvements and advancements can be made without fear of infringing.
Specifically, Section 119C(2) provides examples of “experimental purposes”, including, but not limited to:
- determining the properties of the invention,
- determining the scope of a claim relating to the invention,
- improving or modifying the invention,
- determining the validity of the patent or of a claim relating to the invention, and
- determining whether the patent for the invention would be, or has been, infringed by the doing of an act.
Jusand versus Rattlejack is the first Court case that has “assessed” what criteria the “experimental purposes” has to have in order to avoid a finding of infringement.
The patent was already held to be invalid due to a lack of sufficiency, however Judge Rofe J still considered the scope of Section 119C.
The patentee, Jusand Nominees Pty Ltd (Jusand), patented a mining safety system which plugs up bore holes in underground mines. Many drill bits break and are left lodged in the rocks, later dropping down and causing injury to working miners or mining equipment below. Murray Engineering Pty Ltd (Murray) was alleged to have infringed by selling/supplying the system to an associated corporate third-party entity, mining contractor Byrnecut Australia Pty Ltd (Byrnecut).
Murray alleged exemption from infringement under S 119C because the system was used for experimental purposes.
Specifically, Byrnecut:
- In March 2020 tested an initial prototype which failed the bore hole drop tests.
- In May 2020 a prototype version 2 similarly failed.
- In August 2020, a third prototype was designed and it passed the testing.
- In 2021, Byrnecut purchased 200 third prototype systems from Murray for a 12-month period. In the Court case, this was said to be to trial and experiment. However, the agreement made no mention of experimentation and made reference to sales and marketing terms.
Of note, Rofe J held that S 119C is:
- Not confined to laboratory work, and so equally applied to experimentation in the mining industry.
- The early field tests of the system in March, May and August 2020 were indeed, for “experimental purposes”.
- The 12-month 2021 “testing” of 200 safety kits was no longer for “experimental purposes”.
Regarding the patent specification requirement of “sufficiency”, the Jusand patent was held invalid on the basis of lacking “sufficiency”.
What is it? Sufficiency is “disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the art”.
Generally, and subtly – the patent must teach the skilled addressee how to perform the invention when reading the claims.
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The Jusand patent covered a safety system for preventing a broken longhole drill rod (heavy material) from falling down the drill bore hole and injuring a person or equipment in the tunnels below. The invention claimed a plug-like product inserted into a bore hole containing a broken drill rod or rods, designed to break the fall of any dropping drill rods and material.
Upon investigation, the Court identified that the plug could be made from a range of materials. However, the patent failed because the description in the patent only provided support for the plug being made from steel.
Perram J stated that it’s “impossible to accept [Jusand’s] submission that the material from which the safety system is to be made is irrelevant to it”. And so, when drafting a patent, it is important to be clear on all essential features, their construction, material, so that no further invention is needed to perform the intended result.
The above information should be treated as “informative only”. Legal advice must be sought for every individual and their particular commercial needs and circumstances. Please contact your Patent and Trademark Attorney from our firm to examine and assess your particular situation and provide advice that suits you.
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