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2.11.7.3 Relationship Between the Invention Described and the Invention Claimed

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 2.11.7.3A Inconsistency Between the Invention Disclosed and the Invention Claimed.

A complete specification must ‘describe the invention fully’ (sec 40(2)(a)).  In assessing this requirement, it is necessary to take into account the whole of the complete specification, i.e. both the body of the specification and the claims (Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at 12-13).  In contrast, when assessing whether there is fair basis within the meaning of sec 40(3), it is necessary to separate the claims and the body of the specification, in order to determine whether the former are fairly based on the matter described in the latter (Lockwood v Doric [2004] HCA 58 at paragraph 49).

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