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2.11.3.14A Cyclic Inventions

Date Published

Note: The information in this part only applies to:

  • 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 2.11.3.14 Cyclic Inventions.

It is possible for "cyclic inventions" to 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 clear enough and complete enough disclosure on both applications and seek clarification of the matter.

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