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.

Note: For a summary of the principles underlying clear enough and complete enough disclosure, support and usefulness, see 2.11A Annex B – Summary of the Clear Enough and Complete Enough Disclosure, Support and Useful (Utility) Provisions.

Subsections 40(2)(a) and 40(3) each require the specification to provide an enabling disclosure of the claimed invention, such that the person skilled in the art can, on the basis of the information disclosed in the application as filed and the common general knowledge in the art, perform the invention over the whole width of the claims, without undue burden or the need for further invention.

Both subsections are concerned with the relationship between the disclosure and the width of the claims. However, sec 40(2)(a) relates to the specification as a whole and the clear enough and complete enough (enabling) disclosure must be in the complete specification. Subsection 40(3) relates to the claims, which must be consistent with and supported by an enabling disclosure in the body of the specification (i.e. the description, together with any drawings, graphics, photographs and sequence listing).

Given the overlap between the enablement requirements of sec 40(2)(a) and sec 40(3), in most cases where the claims are not supported by an enabling disclosure for the purposes of sec 40(3), the specification will also lack a clear enough and complete enough disclosure under sec (40)(2)(a), and vice versa. However, in the rare cases where the only disclosure of a feature occurs in the claims, the complete specification may satisfy the requirements for a clear enough and complete enough disclosure under sec 40(2)(a), but the claims will lack support under sec 40(3) if the body of the specification does not provide an enabling disclosure of the claimed matter.

Where objections on both grounds apply, whether an objection is raised as lack of support, or lack of a clear enough and complete enough disclosure, is not important. Examiners are to use their judgement and may take either objection or both.

Where both objections are raised, examiners may take separate objections, or simply note in a fully reasoned objection under one ground (or in a separate objection) that the reasons provided would also form the basis for an objection under the other ground. Where the reasons in an objection under sec 40(2)(a) or sec 40(3) would also justify an objection under sec 18(1)(c) for lack of usefulness, the same approach may be followed. (This is consistent with the strategy used where objections on the grounds of novelty and inventive step both apply).

If an objection under sec 40(3) arises from a textual inconsistency it is not necessary to also raise or refer to an objection under sec 18(1)(c) for lack of utility. Similarly, if a serious inconsistency is addressed as a lack of utility it is not necessary to also object to a lack of support.

Note: An objection under either sec 40(2)(a) or sec 40(3) cannot be overcome by the addition of new matter to the specification, since this is prohibited under sec 102(1) (see 2.23.7A Allowability of Amendments to Complete Specifications). However, either objection may be remedied by restricting the scope of the claims.