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Australian patent claim interpretation - the preamble - 2 February 2016

 

Under Australian law, the preamble to a patent claim is limiting. The preamble often indicates the intent of the claimed invention. Whilst there is some diverging authority as to the extent to which an Australian patent claim is limited by a recital of intent (as we have discussed here and here), orthodoxy suggests that a claim is limited to suitability for the recited intent.

A recent decision [1] of the Full Federal Court [2] illustrates an approach consistent with orthodoxy and goes one step further to confirm that the limitations conveyed by the preamble can in and of themselves amount to a patentable departure from the prior art.

The preamble to the claim ‘a garden hose’ is construed [3] as ‘a hose capable of being used as a garden hose and performing the functions one would ordinarily expect a garden hose to perform’ and Justices Kenny and Beach make explicit [4] that ‘In our view, the opening words of claim 1 “a garden hose” provide a limitation on the claim scope’.

Their Honours go on to conclude [5] that this limitation is sufficient departure from a prior art oxygen hose for a ‘stowable aviation crew oxygen mask’ to sustain an Australian innovation patent.

 

Patent attorney manufacturing 

Ben Mott - Principal

Mechanical Engineer & Patent Attorney

 


 

[1] Product Management Group Pty Ltd v Blue Gentian LLC [2015] FCAFC 179

[2] The Court of first appeal for Australian patent matters

[3] At paragraph 47

[4] At paragraph 226

[5] At paragraph 230