2.18.6 Same Invention

Date Published

The test for whether the claims define the same invention is:

"if the claims of the two specifications were located in the same specification, would there be redundancy of claiming?"

i.e. whether there are claims of identical scope (see Smith Kline Beecham p.l.c.'s Application [2000] APO 54). However, the requirement for "identical scope" does not necessarily impose a requirement for identical wording; it is the overall scope of each of the claims that is considered.

In Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302 at [150] Emmett J stated:

“The fact that the claims of one patent are not literally identical to the claims of another patent does not necessarily mean that they are not for the same invention.  If the differences in wording of the claims are inconsequential, the two sets of claims may nevertheless relate to the same invention.”

When considering whether the claims define the same invention:

"any situation giving rise to an objection under sec 64(2) must be so plainly evident that it is beyond reasonable argument".

(Smith Kline Beecham p.l.c.'s Application).