2.11.4 Claims Define the Invention

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 2.11.4A Claims Define the Invention.

A complete specification must end with a claim or claims "defining the invention" (sec 40(2)(b) where it relates to an application for a standard patent and sec 40(2)(c) where it relates to an application an innovation patent). This requires that the claims define the monopoly for which application has been made. Thus, in AMP v Utilux (1971) 45 ALJR 123 at page 128, McTiernan J stated:

"The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect."

Further, the full bench of the High Court indicated on appeal (Utilux v AMP (1974) 48 ALJR 17 ) that:

"the definition of any invention must be found in the claims read with the specification as a whole."

The dictionary to the Act defines ‘invention’ as including an ‘alleged invention’. Accordingly, the novelty or inventiveness of the matter defined by a claim is not a relevant consideration. Rather, it is whether the claim fulfils the statutory purpose of ‘defining the invention’, including an alleged invention.

Similarly, where there is an inconsistency between the invention claimed and the invention described, the objection is not that the claim does not define the invention. Rather, the objection is that the claim is not fairly based on the description (see 2.11.7 Claims are Fairly Based).

The objection of failing to define the invention will typically arise in the following ways:

  • Claims of the form ‘My invention is worth $1 million dollars’, or ‘My invention works better than X’s invention’. Such claims are most commonly found in private applicant cases.
  • Claims that bear no relationship to anything described in the specification.