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


Clear Enough and Complete Enough Disclosure

Although decided in the context of full description, the principles derived from the decisions referred to below are also applicable to whether there has been a clear enough and complete enough disclosure.

The question of whether the complete specification discloses the invention in a manner that is sufficiently clear and complete is one of fact, and whether a specification discloses a method that will actually perform the invention is a matter which can best be determined by receiving evidence from persons skilled in the art.  (Principle derived from Universal Oil Products Co. v Monsanto Co. (1972) 46 ALJR 658 ).

If, prima facie, the specification would appear to the skilled person to lack a clear enough and complete enough disclosure, the onus of establishing that the invention is described in sufficient detail lies with the applicant. (The Explanatory Memorandum).


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).  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 disclosing the invention in a clear enough and complete enough manner.  Note that a “best method of performance” need not be a specific exemplification of an invention, simply enough instruction for the skilled worker to put the claimed 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 that an objection is likely to arise that the applicant has not disclosed the best method of performing the invention is during opposition proceedings.

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