Object statements are typically included in the body of a patent specification to provide support for the inventive step thought to have been made. However, such statements can also have significant implications on the interpretation and validity of the claims of a patent as was starkly illustrated in the decision of Greenwood J in Uniline Australia v SBriggs [2009] FCA 222, in which the Court placed great reliance on an object statement found in the body of the patent in suit when construing the scope of the claims.
The specification of the patent in suit included a statement that “It is an object of the invention to provide a bi-directional clutch which avoids the need for a plurality of helical springs and complex configuration of the second shaft.” In considering the impact of this statement on the construction of the claims of the patent, Greenwood J stated that:
The object statement logically takes up two features identified by the author of the patent in suit in the author’s discussion of the prior art spring clutch of AP825. That discussion identifies the functionality of sequentially engaged multiple springs in effecting the transmission of torque loads and the need, dictated by the presence of a number of helical springs within the spring clutch, for complex openings and barriers in the engagement shaft engaging those multiple springs. The object statement suggests that the object of the invention is to avoid each of these features. … That object statement suggests that both advantages of the invention need to be present to achieve the object of the invention which suggests that the object statement contemplates a monopoly to be defined by the claims in terms of a bi-directional clutch that has the advantage of simply a single spring (rather than many) and a second advantage that complex openings and barriers in the configuration of the second shaft … engaging that single spring, are avoided.
Having found that it was a requirement of the invention that both stated advantages be achieved in order to satisfy the object of the invention, the Court rejected a broad construction of the claims put forward by the patentee which would have resulted in the claims covering embodiments which achieved only one of those advantages. This resulted in a finding of non-infringement.
The Court also noted that if the claims where accepted to have the broader construction put forward by the patentee, then in light of the object statement, the claims would have been bad for lack of utility for encompassing embodiments which failed to achieve both of the stated objectives.