Novelty and infringement by intended use

Novelty and infringement by intended use – 30 October 2014

Products and methods claimed in terms of intent may be identical to products and methods intended for other purposes. Thus much can turn on the extent to which claim scope is limited by recitals of intent. Is an old product for a new use novel? Is a method intended to achieve result A a method of achieving result B if it in fact achieves results A and B?

Are claims limited by recitals of intent?

For the most part, the USPTO’s MPEP [1], the EPO’s [2] Guidelines for Examination and the Australian Patent Examiner’s Manual give substantially consistent answers to this question [3] that are, in our view, consistent with conventional principles of claim construction, logically sustainable and representative of an orthodox approach. On the other hand, recent authority suggests that Australia might be leading the way to a different answer.

An example to illustrate

We came across an online forum topic discussing a claim limited by a recital of intent and couldn’t resist using it. It starts with:

‘Claim 243 A gerbil umbrella comprising a stick and a shade, which is shaped and sized so as to provide a minimal barrier against rain, and which is (say) transparent so as to avoid obscuring full view of the beauty that is gerbil.

… is rejected because it is anticipated by a beach umbrella, a carrying-case for an orange safety cone, and a design patent for a clear vinyl raincoat for humans’,

and goes on to discuss the Examiner’s view that ‘gerbil umbrella’ is the intended use and the claimant’s incredulity that this is not a claim limitation.

The orthodox approach

The EPO eloquently states (here):

‘If a claim commences with such words as: “Apparatus for carrying out the process etc …” this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim’,

and goes on to explain by way of example that a plastic ice cube tray is not ‘a [mould] for molten steel’.

We extend this example by suggesting that:

a mould used to mould molten iron is ‘a mould for molten steel’ regardless of whether anyone has ever thought or suggested that that mould be used with steel [4]; and
the plastic ice cube tray is ‘a mould for jelly’ regardless of whether anyone has ever thought or suggested that the tray be used with jelly.

It follows that a cocktail umbrella is in our view a gerbil umbrella … [5]

The logic of the above is borne out when applied in the context of assessing novelty, in that it leads to the hopefully uncontroversial proposition that ‘[S]omething which is old does not become patentable upon the discovery of a new property’ (as in the USPTO’s MPEP here).

The EPO reached a conclusion entirely consistent with this proposition when considering a claim to ‘A method for reducing malodor [sic] associated with a [product], said method comprising the steps of …’ (here):

‘… the purpose indicated in claim 1, namely for reducing malodour, would at the most limit the claim to the extent that the method has to be suitable for reducing malodour. However, the method of claim 1 cannot be rendered novel thereby, since the Respondent has never contested the fact that the otherwise identical method disclosed in document (2) (see point 3.1 above) would also lead to a reduction in malodour and the Board see no reason for taking a different view’.

To be clear, we are not suggesting that there is no novelty in the new use of an old thing. It’s just that any novelty must reside in the use, not in the thing. ‘A method, of shading a gerbil, including the use of an umbrella …’ may well be novel.

Of course, the above discussion is qualified by the routine proviso that different conclusions may be reached depending on evidence as to how the skilled person would interpret the claim wording.

Other approaches

Differing views on the topic abound. On the one hand, various examiners and attorneys often espouse that ‘”for” is not limiting’, meaning that everything after the word ‘for’ in a claim can be ignored. On the other hand, recent ratio [6] from Australia’s most authoritative Court (the High Court of Australia) suggests that the method for reducing malodour considered by the EPO might now be considered differently under Australian law, and recent decisions from lower Australian Courts include similar comments in respect of apparatus claims.

The High Court of Australia recently considered (here) a claim to:

‘[a] method of preventing or treating a skin disorder, wherein the skin disorder is psoriasis, which comprises [7] administering to a recipient an effective amount of [leflunomide]’.

The claim does not require that the recipient be ‘a human in need thereof’. Nor is the administration explicitly in response to a need to treat or prevent psoriasis.

The Court reached the view that this claim does not take in the administration of the leflunomide to treat Psoriatic Arthritis (PsA) against a backdrop of accepted facts including [8]:

‘Almost every person with PsA has or will develop psoriasis’; and

‘When this compound is prescribed to treat a patient with PsA, it is usually expected to also prevent or treat the patient’s psoriasis, if that person has a concurrent case of psoriasis’;

or as the lower Courts [9] put it (here):

‘if leflunomide is administered to a patient with PsA, that administration would be expected to prevent or treat the patient’s psoriasis, to some extent at least’.

It was unanimously agreed [10] that:

‘Claim 1 is recognisably a claim limited to the specific purpose of preventing and treating psoriasis. Given the prior art, any novelty and inventive step reposes in, and is confined to, that hitherto unknown therapeutic use of leflunomide. The compound (with prior therapeutic uses) was disclosed in Patent 341. The monopoly granted in respect of claim 1 is limited to the purpose (hitherto undiscovered) for which the (known) compound can be used’ [11] [our emphasis],

and

‘Claim 1, for a hitherto unknown therapeutic use of a pharmaceutical substance (having prior therapeutic uses), is limited to the purpose of treating or curing psoriasis and cannot be directly infringed by the exploitation of leflunomide for the treatment of PsA’ [our emphasis].

For now, this is binding law from Australia’s most authoritative Court. That said, without the benefit of the totality of the evidence available to the Court, it is difficult to reconcile this conclusion with the orthodox approach.

The claim includes no apparent limitation to recipients having psoriasis. Indeed ‘preventing’ seems to dictate otherwise. Nor is there any explicit causal nexus between the psoriasis and the administration, e.g. the claim does not recite anything akin to ‘administering in response to at least one of a diagnosis of psoriasis and a prognosis of psoriasis’.

Given accepted facts 1, 2 and 3, it seems:

inescapable that the administration of the leflunomide with the intent of treating PsA is ‘[a] method of preventing or treating a skin disorder, wherein the skin disorder is psoriasis, which comprises administering to a recipient an effective amount of [leflunomide]’; and
the only difference between administration for PsA and administration for psoriasis is in the mind of the administrator.

The possibility of claims characterised by differences only in the mind is explicitly endorsed in a recent Australian Federal Court decision [12] (here) regarding synthetic grass. The alleged invention was defined in terms of:

‘A synthetic surface [comprising certain features] whereby the synthetic surface can receive an infill of particular [sic] material [e.g. sand] to approximately 2/3 the height of the [grass-blade simulating] ribbons …’.

To emphasise: this is an apparatus claim.

The patentee’s submission that ‘”can receive” in the claims means “is designed or intended to receive”’ was explicitly preferred over the alleged infringer’s submission ‘that the word “can” ought to be understood as meaning “capable of”’.

So a mould that can receive molten iron is not ‘a mould that can receive molten steel’, and an ice cube tray is not ‘a mould that can receive jelly’?

If claims are to be characterised solely by differences in the mind, there are some immediately apparent problems. Whose mind? How do we tell what they are thinking, were thinking or will think? Is a nurse’s administration of leflunomide without knowledge of the prescribing doctor’s intent within the scope of the claim? Did anyone ask the gerbil about the gerbil’s intentions? What if the gerbil picks up the umbrella unintentionally?

Is there a useful takeaway message?

Beware of the range of divergent views on statements of intent:

Claims may be interpreted more narrowly than orthodoxy suggests – e.g. the use of a mould to mould molten iron may not be an infringement of a claim to ‘a mould for molten steel’.
If you intend a claim to be limited to a specific intent, make that explicit in terms clearly beyond mere differences in the mind – don’t simply specify ‘for’ if ‘in response to a diagnosis’ is what you mean, or at least have suitable fall-back positions.

Novelty and infringement by intended use