Read the Specification as a Whole

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed before 15 April 2013.  
  • innovation patents with an examination request filed before 15 April 2013.
  • innovation patents where the Commissioner decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see Read the Specification as a Whole.

A complete specification must ‘describe the invention fully’ (sec 40(2)(a)).  In assessing this requirement, it is necessary to take into account the whole of the complete specification, i.e. both the body of the specification and the claims (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at 12-13 [14] and [16]).  This differs from the requirement of fair basis, where it is necessary to separate the claims and the body of the specification, in order to determine whether the former are fairly based on the matter described in the latter (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd supra at 12 [15] and Lockwood v Doric [2004] HCA 58 at paragraph 49).

As indicated in Rosedale Associated Manufacturers Ltd v Carlton Tyre Saving Co Ltd [1960] RPC 59 at 69:

"It is clearly ... legitimate and appropriate in approaching the construction of claims to read the specification as a whole. Thereby the necessary background is obtained and in some cases the meaning of the words used in the claims may be affected or defined by what is said in the body of the specification."

As a consequence:

a. The specification may set up a dictionary to define terms – see Dictionary Principle.

b. If an expression in a claim is ambiguous, it is permissible to resort to the body of the specification to define or clarify the meaning of words used in the claim (Interlego AG v Toltoys Pty Ltd (1973) 130 CLR 461 at 479).

c. If a claim is clear, it is not to be made obscure because obscurities can be found in particular sentences in other parts of the specification. In addition:

"if the claims have a plain meaning in themselves, then advantage cannot be taken of the language used in the body of the specification to make them mean something different.”

EMI v Lissen (1939) 56 RPC 23 at 39.

d. It is not legitimate to confine the scope of the claims by reference to limitations which may be found in the body of the specification but are not expressly or by proper inference reproduced in the claims themselves. To put it another way it is not legitimate to narrow or expand the boundaries of monopoly as fixed by the words of a claim by adding to those words glosses drawn from other parts of the specification (Decor Corp v Dart Industries 13 IPR 385).

e. The context of the specification may imply a limitation on the scope of the claims. In International Business Machines Corp v Commissioner of Patents (1991) 22 IPR 417 the specification related to computer graphics, but the claim made no specific reference to a computer environment. Burchett J found that:

"When the present specification is read, the whole of the context rises up to insist that claim one is talking about the operation of computers. Almost the first words of the specification inform the reader that the invention 'relates to computer graphics and more specifically to a method and apparatus for generating curves on computer graphic displays'. The recital of the prior art reinforces the clear impression thus conveyed from the beginning of the document."

f. Similarly, in Synthetic Turf Development v Sports Technology International [2005] FCA 69 (affirmed in [2005] FCAFC 270), the specification described a process where artificial turf was laid and packed with sand, with subsequent rolling to ‘crimp’ the ends of the fibres. An alleged infringing product crimped the fibre before the turf was laid. The claim merely referred to ‘crimp’ and the specification did not contain a ‘dictionary definition’ of ‘crimp’. Nevertheless the court construed ‘crimp’ in the context of the specification as being crimped after laying.

g. Where the specification indicates an aim or intent, this may require consideration when construing the claims.  In Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd (No 2) [2012] FCAFC 102, the Full Court found that the:

“description shows that the object or end in view of the claimed method is the prevention or treatment of psoriasis by the administration of leflunomide”;

i.e. the purpose of the administration was relevant in construing the claim.

h. It is possible to use the claims to resolve any ambiguities in the description (Kauzal v Lee (1936) 58 CLR 670 at 687).  This differs from giving the claims a gloss from the description, which is not legitimate (Welch Perrin & Co Pty Ltd v Worrel (1961-62) 106 CLR 588 at 610), since the limitation arises from the whole thrust of the specification as against mere comments in the description.