8.7.3.1 Date for Determining Full Description

Also in this Chapter:

• 8.7.3.2 Can the Nature of the Invention be Ascertained?

• 8.7.3.3 Compliance with Subsection 40(2) is a Question of Fact

• 8.7.3.4 Enabling Disclosures

• 8.7.3.5 Effort Required to Perform the Invention

• 8.7.3.6 Different Aspects Claimed in Different Claims

• 8.7.3.7 Inclusion of References

• 8.7.3.8 Trade Marks in Specifications

• 8.7.3.9 Colour Drawings and Photographs

Key Legislation:

Patents Act:

• s223 Extensions of time

Related Chapters: 

• 2.11.3.15 Biological Inventions and the Budapest Treaty
• 2.7 Micro-Organisms and Other Life Forms

The specification is required to fully describe the invention, including the best method of performance, at the time of filing the application.  However, where these requirements are not met, they may be rectified at any time up until grant (at least), subject only to compliance with the requirements for the allowability of amendments (Eli Lilly v Pfizer Overseas Pharmaceuticals [2005] FCAFC 224).

Biological Inventions, Budapest Treaty

For inventions involving biological material, the applicant may rely upon the Budapest Treaty in order to meet the full description requirement (see 2.11.3.15 Biological Inventions and the Budapest Treaty and 2.7 Micro-Organisms and Other Life Forms). In this case, certain information must be provided either by OPI, or by acceptance (both subject to the operation of s223). Critically, the deposit under the Budapest Treaty must be made on or before the filing date of the application. The late deposit of a micro-organism under the Budapest Treaty cannot be rectified via an extension of time under s223 (as there is no relevant time period to be extended), nor overcome by filing a divisional application.