8.3.2.1 The Section 102(1) Provisions Explained

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• Meaning of "as a result of the amendment"
• Meaning of "in substance disclosed"
• ​​​​​​​Meaning of "The specification as filed"

Meaning of “as a result of the amendment”

Under sec 102(1), the clause “as a result of the amendment” prescribes that a proposed amendment is not allowable where that amendment results in a claim to matter not in substance disclosed in the specification as filed.  

An amendment that does not claim new matter is therefore allowable.  This is so even where the amendment retains new matter that was introduced in an earlier allowed amendment (e.g. voluntary sec 104, Article 34 etc).  

For example, new matter may be present in a claim that was introduced by an Article 34 amendment during the international phase.  In this situation, a subsequent amendment proposed under sec 104 which retains the Article 34 amendment, but does not itself add any new matter, would be allowable under sec 102(1).  This is because the new matter was not added as a result of the subsequent sec 104 amendment; it was added by the Article 34 amendment.

Similarly, new matter can be included by an amendment to the description, provided no claim is made to, or no claim includes, that new matter.  Alternatively, an amendment to the claims (only) which results in a claim to matter previously disclosed, but not claimed, would be allowable.

For further information on applying these provisions, see 2.23.8.2 Section 102(1) Examination Practice.

Meaning of “in substance disclosed”

Under sec 102(1), the clause “in substance disclosed” requires that an amendment must not result in a claim to matter that was not previously disclosed, either explicitly and/or implicitly, in the specification as filed.  

The meaning of "in substance disclosed", as distinct from an express disclosure, has previously been considered (A.B. Volvo's Application 1 IPR 554).  In this case, reference was made to the following statement by the High Court:

"The substance must appear from the language itself interpreted in accordance with ordinary rules of interpretation with a knowledge of the prior state of the art to which the claim relates."

(AMP Incorporated v Commissioner of Patents (1974) AOJP 3224 at page 3227)

Although the AMP case was referring to the substance of a claim and the allowability of amendments under a provision corresponding to sec 102(2), the comments of the High Court apply equally to the meaning of the word "substance" in the context of sec 102(1) (see Robertshaw Controls Company GSA Industries Ltd (1991) AIPC 90-784 and Kornelis' Kunsthars Producten Industrie BV v WR Grace & Co 28 IPR 471).

Matter that is "disclosed in substance" may be either expressly disclosed or impliedly disclosed.  “Impliedly disclosed” means that matter would either be implied by the expert reader or disclosed by mathematical information (Ethyl Corporation's Patent (1972) RPC 169).

A broad disclosure in the description may not be sufficient to provide the "substance" to allow an amendment to the claims.  An example of this would be where the description is directed to broad generalisations and the claims as proposed to be amended are quite specific and provide detailed definitions of the invention broadly described (note, however, the paragraph below).

Where the specification as filed includes a term which is very broad and not exemplified, that term may be regarded as disclosing “in substance” the meaning that the skilled addressee would have understood it to mean at the priority date, based on the common general knowledge in the art (Herchel Smith's Applications (1968) AOJP 774).  For example, the term “mechanical fastening means” would in substance disclose nuts and bolts if these were known in the art at the priority date.

For further information on applying these provisions, see 2.23.8.2 Section 102(1) Examination Practice.

Note: In the context of a document being considered as a whole, the words “described” and “disclosed” have an equivalent meaning (see 2.12.1.1 Priority Date of Claims - Level of Disclosure Required).  Note also that the drawings form part of the disclosure of a specification (Jarvis v Doman (1986) AIPC 90-281).

Meaning of “the specification as filed”

Under sec 102(1), the allowability of amendments must be considered by comparing the subject matter of the amendments with the specification as filed, i.e. the specification as originally filed.  Consequently, where the specification has been proposed to be amended by earlier statements of amendments, the relevant comparison is with the original specification only and all amendment proposals are to be disregarded. Similarly, where amendments to the specification have already been allowed following one or more requests under sec 104, the allowability of any subsequently proposed amendments is determined by reference to the specification as originally filed.

The information disclosed in an abstract filed with a complete specification may also be taken into account (reg 3.3(7)) (this does not include abstracts drafted by examiners during international or national examination).

The following matter is not part of the specification as originally filed and is therefore irrelevant to the allowability of any subsequently proposed amendments under sec 102(1):

• Article 34 amendments;
• associated applications, such as a provisional, additional, divisional or parent (or other ancestor, e.g. grandparent) applications, or a Convention document;
• a translation of an application originally filed in a language other than English.

For further information on applying these provisions, see 2.23.8.2 Section 102(1) Examination Practice.