Claims as Basis of Disclosure

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 Claims as Basis of Disclosure.

For the purpose of full description, regard must be had to the claims.  As noted in Kimberly-Clark v Arico (2001) 207 CLR 1 (at paragraphs 12-13), the complete specification referred to in sec 40(2)(a) is the whole document inclusive of the claims:

‘The question then is whether the invention has been fully described in the complete specification. The text speaks here of the complete specification, not any one part thereof. From the distinction drawn in s 40(2) between describing the invention in the complete specification and defining the invention in any claims with which the complete specification ends, it does not follow that the description is to be gleaned solely from one part (the body) and that it is forbidden to obtain any assistance by regard to the remainder (the claims) of the complete specification. Rather, the text indicates that the specification must be read as a whole and that reference to the claims may dispel ambiguity or uncertainty from the body of the specification concerning the description of the invention.’

Where the only disclosure of a relevant feature occurs in the claims, it is proper to have regard to the claims to determine what the invention is, and whether it has been fully described. Note that the mere presence of the feature in a claim does not necessarily establish that the feature has been disclosed. Rather, the specification as a whole, including the claims, must be construed to establish what is disclosed.

To comply with fair basis, a specification may require amendment to incorporate the relevant disclosure into the body of the specification.  However, there is no requirement for a claim to have an explicit equivalent in the specification if all the features of the claim can still be read from the specification as a whole (see Photocure v Queen’s University 64 IPR 314 at paragraphs 147-149).

Where the feature referred to in the claim is inconsistent with the disclosure as a whole, it may be that a proper construction of the specification will lead to a conclusion that the feature in the claim has not been disclosed. In such situations, a fair basis objection cannot be overcome by inserting the feature into the description, as that amendment would have the effect of the claim claiming matter not in substance disclosed in the specification as filed.