2.11.3.3 Compliance with Subsection 40(2) is a Question of Fact

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 2.11.3.3A Compliance with Subsection 40(2) is a Question of Fact.

In this topic:

Full Description

The question of whether a specification fully describes the invention is one of fact, and whether a specification discloses a method that will actually perform the invention is a matter best determined by receiving evidence from persons skilled in the art (Universal Oil Products Co. v Monsanto Co. (1972) 46 ALJR 658 ).

Thus, examiners should avoid arguments over whether the specification fully describes a method that will actually perform the invention (including, for example, a method that appears to be purely theoretical and not actually performed by the applicant), as rarely will they be in a position to have the necessary evidence to properly support their case. In N.V. Philips' Gloeilampenfabrieken's Application (1958) AOJP 799 (Ferroxcube case), the Commissioner was directed to accept the application, despite the specification being open to "considerable criticism" on the ground of sufficiency. However, where a specification "so clearly fails to disclose a manner of carrying out the invention that no evidence is necessary to show its insufficiency", then examiners should object, pursuant to the principles set out in Commissioner of Patents v Microcell (1959) 102 CLR 232. This situation may arise where, for example, the conclusion is reached on the basis of admissions made in the specification.

Best Method of Performance

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.  Note that a “best method of performance” need not be a specific exemplification of an invention, simply sufficient instruction for the skilled worker to put the invention into effect.

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 an objection that the applicant has not disclosed the best method of performing the invention is likely to arise is during opposition proceedings.