We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights.

2.11.1 Overview

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 2.11.1A Overview.

Section 40 provides that:

  1. A provisional specification must describe the invention.
  2. A complete specification must:
    1. describe the invention fully, including the best method known to the applicant of performing the invention; and
    2. where it relates to an application for a standard patent - end with a claim or claims defining the invention; and
    3. where it relates to an application for an innovation patent - end with at least one and no more than 5 claims defining the invention.
  3. The claim or claims must be clear and succinct and fairly based on the matter described in the specification.
  4. The claim or claims must relate to one invention only.

The basic procedure for dealing with sec 40 considerations is:

i. Construe the specification (including the claims) to identify the invention.

ii. Assess whether the specification fully describes the invention.

iii. Assess whether the claims define the invention (typically this only arises with private applicant cases).

iv. Assess whether the claims are clear and succinct.

v. Assess whether the claims are fairly based on the description (exclusive of the claims).

These steps are explained in the following parts of this chapter.

The Role of Section 40

The High Court considered the role of sec 40 in two decisions: Kimberly-Clark Australia Pty v Arico Trading International Pty Ltd [2001] HCA 8 and Lockwood v Doric [2004] HCA 58.  These decisions have in turn been consistently applied in a number of later Federal Court cases including:

Eli Lilly and Company v Pfizer Overseas Pharmaceuticals [2005] FCA 67 (see paragraphs 169-199);

Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 (see paragraphs 268-277 and 325-347); and

Photocure ASA v Queens University at Kingston [2005] FCA 344 (see paragraphs 101-151).

The key general principles which arise from these cases are:

  • Section 40 only goes to the form of the specification.  Issues of whether the alleged invention is novel, inventive, or has utility are of no relevance to whether the specification complies with sec 40 (Lockwood v Doric at paragraph 44);
  • Each ground of invalidity is separate and considerations of one ground should not be imported into another.  The requirements of description and fair basis are therefore distinct from each other and from other grounds of invalidity (Lockwood v Doric at paragraph 49);

  • The test for fair basis is simply whether the claims are consistent with what the specification as a whole describes as the invention.  However, the “invention” for the purposes of sec 40 is not the inventive step or the technical contribution made by the inventor, but rather the “embodiment around which the claims are drawn” (Kimberly-Clark Australia v Arico Trading at paragraph 21); and

  • The test for full description is whether the disclosure is sufficient to enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulties (see Kimberly-Clark Australia v Arico Trading at paragraph 25).

Differences with the PCT and Foreign Practice

There is a significant difference between Australian national law and the PCT guidelines in relation to the requirement for “full support”. In particular, international practice requires that a claim is enabled (or supported) over its full scope.  In contrast, Australian full description law merely requires that one embodiment of the claims is enabled (Kimberly-Clark v Arico [2001] HCA 8 at paragraph 58).

The Australian test for fair basis merely requires consistency between the invention as described and as claimed.  It is separate from the requirements for full description and involves no assessment of enablement.  Examiners are to apply the relevant tests for national examination and the PCT guidelines continue to apply to international search and examination.  

Due to this disparity, examiners should be aware of the limitations of using foreign examination reports (FERs) during national examination and in particular when considering full description and fair basis.  Examiners should therefore not raise a fair basis or full description objection taken in a FER, unless they have reviewed the overseas objection to determine whether it applies under Australian law.

Further, overseas offices often restrict their search where claims are found not to be fully supported.  If this objection does not apply in Australia, examiners may need to expand the original search to cover the full scope of the claims.

Back to top