2.11.3.7A Inclusion of References

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 2.11.3.7 Inclusion of References.

In this topic:

General

The practical effect of sec 102(1) is that the requirements of sec 40(2)(a) must be satisfied at the time of filing the complete specification.

A specification should provide a clear enough and complete enough disclosure of the claimed invention without reference to other documents.  An objection should be taken under sec 40(2)(a) when a document is explicitly incorporated by reference to avoid disclosing matter which is required in order to perform the invention in any of the forms that are claimed.  

For example, a description that referred to feature X, noting that X could be in any form, but preferably in the form disclosed in a cross-reference, would not be objectionable if a claim merely referred to feature X.  However, if the claim specified the particular form disclosed in the reference, the absence of the relevant disclosure would be objectionable under sec 40(2)(a), and an amendment would be required to insert the relevant cross-referenced material before the application could be accepted.

Cross-references to other documents merely to provide background information or prior art, or to illustrate subsidiary features, are not objectionable provided that:

• the cross-referenced document(s) contained the information at the filing date of the specification; and
• where the cross-referenced document is a patent document, it was filed on or before the filing date of the specification that refers to it; or
• where the cross-referenced document is a non-patent document, it was publicly available on or before the filing date of the specification referring to it.

Although a cross-reference for the purpose of providing the whole or substantially the whole body of the specification is sufficient for an application to be accorded a filing date (reg 3.5A), an amendment is required to insert the relevant cross-referenced material before the application can be accepted.

Consequential Amendments to the Specification

Where an explicit reference to a document was present in the specification as filed, amendments which propose to insert the relevant cross-referenced material are generally allowable under sec 102(1), provided the material was verifiably present in the referenced document at the filing date of the application under examination (see also 2.29.5 Substitute Documents).  The requirements where matter is to be added from a cross-referenced patent and non-patent documents, in order that the complete specification disclose the claimed invention in a clear enough and complete enough manner, are discussed further below (see also 2.23.8A Allowability Under Section 102(1)).

Cross-Referenced Material is a Patent Document (e.g. Provisional or Complete Application, Granted Patent)

The patent document must have been filed on or before the filing date of the application that references the document, if it is to be relied upon to provide a clear enough and complete enough disclosure of the claimed invention.  Provided this requirement is met, an amendment to supplement or replace an explicit incorporation by reference (by inclusion of the contents of the document) will generally be allowable.

Cross-Referenced Material is a Non-Patent Document

Incorporation by reference of matter contained in non-patent documents may be problematic, as there may be doubt as to the content of the documents at the filing date of the application under examination.  

An amendment to add matter from a non-patent document explicitly incorporated by reference will generally be allowable, provided that:

• the document was publicly available on or before the filing date of the application;
• the matter sought to be added to the specification was present in the document at the filing date of the specification; and
• the content of the referenced document at the filing date can be verified.  

Where the referenced material is a document not readily available to examiners, the applicant should be requested to provide a copy.  The applicant should also be requested to provide a translation if the cross-referenced document is not in English. (For translations filed before or on 25 September 2019, a certificate of verification for the translation must also be provided).  

Where a reference to an internet page is essential for sufficient disclosure of the claimed invention, a copy of a verifiably-dated web page showing its contents at the filing date must be provided before an amendment can be allowed under sec 102 to add such matter to the complete specification.  Similarly, where there is doubt as to the content of any other referenced document at the relevant date, evidence will be required to establish its disclosure at the filing date of the complete specification, before a proposed amendment to explicitly incorporate the matter can be allowed under sec 102.  

Note: Where the content of a cross-referenced non-patent document is required in order to perform the claimed invention and there is doubt as to its disclosure at the filing date of an application, this may cast doubt on the disclosure of the application, and the allowability of any proposed amendments.  In these situations, where the issue has not been resolved despite adverse reports, examiners should consult Patent Oppositions.

Disclaimers

Where another document is referred to for the purposes of a disclaimer or exclusion of subject matter from a claim, there is no objection under sec 102(1) to an amendment to the specification to include the cross-referenced material, provided the amendment does not result in the specification disclosing or claiming new matter (see also 2.11.5.6A Cross-References and 2.11.5.8 Disclaimers).