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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 Best Method of Performing the Invention.

The specification, in addition to fully describing the invention, must include ‘the best method of performing’ the invention. In American Cyanamid Company v Ethicon Limited [1979] RPC 215 at page 269, it was stated:

"The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention."

Consequently, even if a manner of performing an invention is self-evident, applicants are nevertheless required to set out the best method of performing the invention known to them.  This requirement was confirmed by the Full Court of the Federal Court (Les Laboratoires Servier v Apotex Pty Ltd [2016] FCAFC 27).

The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd. v Anaesthetic Supplies Pty. Ltd., 25 IPR 119). If the applicant identifies a better method at a time subsequent to filing, there is no obligation to amend the specification to include that method. In addition, if the specification does not include the best method, it can be amended to include the best method (as known to the applicant at the time of filing), at least until the time of grant (Pfizer Overseas Pharmaceuticals v Eli Lilly [2005] FCAFC 224).

While a specification must include a best method of performance, the specification does not need to recite the words "the best method known to the applicant of performing the invention is ...". There is also no requirement to provide a ‘best method of performance’ that differs in any way from that which is otherwise provided when fully describing the invention.

The ‘best method of performance’ need not necessarily be a specific example of the invention.  Where there are sufficient instructions for the skilled worker to put the claimed invention into effect, the best method requirement will generally be met [note, however, that this is not automatic (Les Laboratoires Servier supra)].  

The question of whether the applicant has provided the best method of performing the invention is necessarily one of fact and evidence, with the knowledge of relevant facts inherently lying with the applicant. The evidence to establish this is almost certainly not available during examination and the earliest that an objection that the applicant has not disclosed the best method of performance of the invention is likely to arise is during opposition proceedings.

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