Inclusion of References

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 Inclusion of References.

A specification should provide a full description of the invention without reference to other documents.  References to provide background information or prior art, or to illustrate subsidiary features, are not objectionable, provided these documents are publicly available.  However, it is objectionable under sec 40(2)(a) when a document is explicitly incorporated by reference to avoid describing matter which is required in order to perform the invention in any of the forms that are claimed. For example, a description that referred to feature X, noting that X could be in any form, but preferably in the form disclosed in a cross-reference, would not be objectionable if a claim merely referred to feature X. However, if the claim specified the particular form disclosed in the reference, the absence of relevant description would be objectionable.

Although a cross-reference for the purpose of providing the whole or substantially the whole body of the specification is sufficient for an application to be accorded a filing date (reg 3.5A), an amendment is required to insert the cross-referenced material before the application can be accepted.

Consequential Amendments to the Specification

Amendments which propose to insert the relevant cross-referenced material are generally allowable, provided that if the application is OPI, the cross-referenced document was published on or before the OPI date. If the cross-referenced document is not in English, the amendments will not be allowable unless a verified translation of the cross-referenced document is provided by the applicant (see also 2.29.5 Substitute Documents).

Where another document is referred to for the purposes of a disclaimer, or exclusion of subject matter from a claim, there is no objection to an amendment to the specification to include the cross-referenced material, provided the amendment does not result in the specification claiming new subject matter (see also Cross-References and Disclaimers).