2.11.7.4 Only Disclosure is in a Claim

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 2.11.7.4A Support in View of Proposed Amendments.

Sometimes the only disclosure of a relevant feature occurs in the claims. In this situation, the description may need to refer to the feature for the claims to be fairly based. However, there is no need for an “over-meticulous” verbal analysis requiring the exact reproduction of all the claims in the description.  Rather, the specification should be read as a whole to determine whether a feature has been disclosed for the purposes of fair basis (see 2.11.3.10 Claims as Basis of Disclosure).

Note: Where a fair basis objection is raised in these circumstances, it can generally be overcome by amending the specification such that the claims mirror the description.  However, where the claims are inconsistent with the specification, it is unlikely that a fair basis objection can be overcome by amending the specification, as this will result in the claiming of matter not in substance disclosed.