2.11.1A Overview

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed on or after 15 April 2013.
  • innovation patents with an examination request filed on or after 15 April 2013.
  • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.11.1 Overview.

Section 40 provides that:​​​​​​​

1. A provisional specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

2. A complete specification must:

a. disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and 

aa. disclose the best method known to the applicant of performing the invention; and

b. where it relates to an application for a standard patent - end with a claim or claims defining the invention; and

c. where it relates to an application for an innovation patent - end with at least one and no more than 5 claims defining the invention.

3. The claim or claims must be clear and succinct and supported by the matter disclosed in the specification.

3A. The claim or claims must not rely on references to descriptions, drawings, graphics or photographs unless absolutely necessary to define the invention.

4. The claim or claims must relate to one invention only.

The basic procedure for dealing with sec 40 considerations is:

i. Construe the specification and the claims.

ii. Assess whether the specification provides a clear enough and complete enough disclosure of the claimed invention.

iii. Assess whether the claims define the invention disclosed in the specification as a whole (typically this only arises with private applicant cases).

iv. Assess whether the claims are clear and succinct.

v. Assess whether the claims are supported by the matter disclosed in the body of the specification (exclusive of the claims).

These steps are explained in the following parts of this chapter.