Joshua Teoh explains how a decision of the Federal Court of Australia may be relevant to Malaysian patentees.
In Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd  FCAFC 138, the Full Court of the Federal Court of Australia affirmed the decision of Justice Jessup sitting as a single judge in the Federal Court of Australia, holding that the claims in Australian Patent No. 744870 entitled "Extension Drilling System" ("'870 Patent") belonging to the Appellant ("Sandvik") were invalid for, among others, failure to comply with the requirement to describe the best known method of performing or carrying out an invention.
The aforesaid requirement is set out in section 40(2)(aa) of Australia's Patents Act 1990 (Cth) ("section 40(2)(aa)") which stipulates that "a complete specification must disclose the best method known to the applicant of performing the invention".
The technology in this case concerned an extension drilling system for drilling holes in subterranean mining operations such as coal mining, where the structure of the roof of a tunnel is to be rendered more secure by the insertion of rock bolts into the holes drilled into the roof structure. An illustration of a drilling system (drilling rig without drill rods connected at the chuck) is represented in the diagram below.
THE '870 PATENT
The '870 Patent claimed an invention over an extension drilling system. In the invention, each extension rod has a male right-hand rope-threaded connection at one end and a female right-hand rope-threaded connection at the other end. The extension rods are connected together by coupling the male end to the female end, and where a drive chuck (or an adaptor) drives the outside surface of the female end of the rod at the bottom end of the drill rod string such that during the process of uncoupling the drill rod string, there is only one threaded connection between the gripper jaws and the drive chuck (or adaptor). The following diagram illustrates the extension drilling system contemplated in the invention of the '870 Patent:
There were two preferred embodiments described in the specification of the '870 Patent (see diagrams below), where:
The first preferred embodiment as depicted in Figures 1 and 2 show that the drill rods are directly connected to the drive chuck; The second preferred embodiment depicted in Figures 3, 4, and 5 involve the use of an adaptor. Figure 3 identified an alternative adaptor (referred to as...