5.6.7.4 Difference between ‘clear and complete disclosure’ and ‘support’

Date Published

Key Legislation:

Patents Act: 

  • s18(1)(c) Invention is useful
  • s40(2) Disclose the invention in a manner which is clear enough and complete enough
  • s40(3) Claims must be clear and succinct and supported

Overview

Sections 40(2)(a) and 40(3) each require the specification to provide an enabling disclosure of the claimed invention. To comply with these sections, the application must disclose enough information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention. The skilled person is assumed to be familiar with the common general knowledge of the relevant field as it stands at the date when the application is filed. 

Both subsections are concerned with the relationship between the disclosure and the width of the claims.​​​​​​​ The main difference between s40(2)(a) and s40(3) relates to what part of an application an ‘enabling disclosure’ can be derived from:

  • Section 40(2)(a) states that the complete specification (that is, claims, descriptions, drawings, graphics, photographs, and sequence listing) must provide an ‘enabling disclosure’ – that is, a clear enough and complete enough disclosure to enable the skilled person to work the invention; or
  • Section 40(3) states that the body of the specification (that is, the complete specification minus the claims) must provide an enabling disclosure that supports each of the claims.

Examination practice

As the requirements of s40(2)(a) and s40(3) overlap, in most cases where the claims are not supported by an enabling disclosure (s40(3)), the specification will also lack a clear enough and complete enough disclosure (s40(2)(a)), and vice versa.

However, in the rare cases where the only disclosure of a feature is in the claims, the complete specification may satisfy s.40(2)(a) but not s.40(3). The complete specification may provide a clear enough and complete enough disclosure but, as the body of the specification does not disclose the claimed feature, it cannot provide an enabling disclosure that supports all the claims (see also 5.6.7.3 Support for the claims - support for features disclosed only in the claims).

Deciding whether to raise both objections, or only one

Where there are objections on both grounds, examiners are to use their own judgement in deciding between:

  • raising only one objection – in which case they will need to determine which is more appropriate; or
  • raising both objections.

When raising a single objection, to avoid confusion, it is important not to mix the language of s40(2)(a) with that of s40(3).

If the body of the specification does not provide clear enough and complete enough disclosure, it is usually easier to object under s40(2)(a).

If the claims are missing essential features, an objection under s40(3) is usually more appropriate.

If the examiner decides to raise both objections, they may either:

  • make separate objections; or
  • simply note in a fully reasoned objection on one ground that the reasons provided would also be the basis for an objection on the other ground.

Where the reasons in an objection under s40(2)(a) or s40(3) would also justify an objection under s18(1)(c) for lack of usefulness, the same approach may be followed.

If an objection under s40(3) arises from a textual inconsistency it is not necessary to also raise or refer to an objection under s18(1)(c) for lack of utility.  Similarly, if a serious inconsistency is addressed as a lack of utility it is not necessary to also object to a lack of support.