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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 2.11.7 Claims are Fairly Based.

An inventor’s contribution to the art lies in what is added to the state of the art as a result of the inventive concept disclosed in the specification, i.e. how far forward has the inventive concept carried the state of the art?  One way of identifying the contribution to the art is to determine what is disclosed that is new to the art and not obvious.  (Generics (UK) Limited and others v H Lundbeck A/S [2009] UKHL 12; [2009] RPC 13 at [30], [95]) For innovation patents, the references in this part to ‘inventive’ and ‘obvious’ should be read as ‘innovative’.

In effect, the sec 40(3) requirement that the scope of the claims must not be broader than is justified by the inventor’s contribution to the art requires that the claims must be restricted to products and/or processes disclosed in the specification that are novel, inventive and enabled by that disclosure.

A product may be a contribution to the art, even where it is a known and desired goal and/or the only inventive step lay in the method by which it is made (Generics (UK) [2009] at [98]; H Lundbeck A/S v Generics (UK) Ltd [2008] RPC 19 at [36]-[40], [63], [98]).  

Prior to acceptance, what the applicant alleges to be the contribution(s) to the art will be apparent from the claims.  Where the claims are overly broad and/or define the invention by the result to be achieved, reference to the description may provide an understanding of what the inventor has contributed to the art (see also Claiming by Result).

A discovery does not constitute a ‘contribution to the art’ for the purposes of sec 40(3).  A patentable invention is a practical product or process, not information about the natural world (Kirin-Amgen Inc v Hoechst Marion Roussel Ltd [2005] RPC 9 at [77]).  However, if a discovery can be practically applied to produce a useful product or process, this may result in a patentable contribution to the art.  For example, finding that a length of iron treated in a certain way will always point to the north is a discovery; a practical application of the principle is to make a compass which, if it were novel and inventive, would be a contribution to the art. (Genentech Inc’s Patent [1987] RPC 553 at 566)

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