standard patent applications with an examination request filed on or after 15 April 2013.
innovation patents with an examination request filed on or after 15 April 2013.
innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.

For all other standard patent applications/innovation patents, see 2.11.3.10 Claims as Basis of Disclosure.

For the purposes of sec 40(2)(a), a clear enough and complete enough disclosure of the claimed invention must be found in the complete specification, including the claims. This is in contrast to the sec 40(3) requirement that the claimed invention be supported by the disclosure in the body of the specification, excluding the claims.

When assessing compliance with sec 40(2)(a), the specification must be read as a whole, and regard may be had to the claims to dispel ambiguity or uncertainty from the body of the specification concerning the description of the invention (this principle was provided by the Court in Kimberly-Clark v Arico (2001) 207 CLR 1 at 12-13, in the context of full description, however it would also apply to the assessment of clear enough and complete enough disclosure; see also Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224 at paragraph 325). It follows that where the only disclosure of a relevant feature occurs in the claims, it is proper to have regard to the claims to determine whether the claimed invention complies with sec 40(2)(a).

However, the mere presence of a feature in a claim does not necessarily establish an enabling disclosure of the claimed invention for the purposes of sec 40(2)(a) – it is necessary to construe the complete specification as a whole to establish what the disclosure enables the person skilled in the art to do. It may be that a proper construction of the specification will lead to a conclusion that the claimed invention has not been disclosed clearly enough and completely enough. For example, an application will not comply with sec 40(2)(a) where:

a feature referred to only in a claim is inconsistent with the disclosure as a whole; or
a feature referred to only in a claim does not provide sufficient information to enable the person skilled in the art to perform the invention over the whole width of the claim, without undue burden or the need for further invention (and the feature is not otherwise sufficiently enabled by the common general knowledge in the art).

Section 40(3) Issues (Support for the Claims)

Where a feature appears only in a claim, in order that the claim is supported for the purposes of sec 40(3), an amendment may be required to incorporate the relevant feature into the body of the specification (see 2.11.7A Support for the Claims).

There is no requirement for a claim to have an explicit equivalent in the description or drawings, graphics or photographs if all the features of the claim can be read from the body of the specification (see also Photocure v Queen’s University 64 IPR 314 at paragraphs 147-149). However, if the body of the specification contains no disclosure of the feature, either explicitly or implicitly, the claim will only be supported under sec 40(3), if the specification is amended to insert the feature into the description.