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. Cyclic Inventions

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 Cyclic Inventions.

It is possible for "cyclic inventions" to sometimes occur in concurrent cases, e.g. one specification may describe the preparation of B from A; the other describes the preparation of A from B. Neither specification discloses any other means of preparation of either A or B, both of which are presumed to be new compounds or new classes of compounds, since otherwise one of the inventions may not be novel.

As a general rule, it is not permissible to use one specification to assist in the interpretation of the other, even if filed by the same applicant (Pfizer Inc v Commissioner of Patents [2005] FCA 137). The fact that one specification contradicts the other is not a basis for an objection, as each application stands on its own.  Instead, examiners should raise an objection of lack of full description on both applications and seek clarification of the matter.

Back to top