2.23.8.2 Section 102(1) Examination Practice

Note: The information in this part only applies to:

• requests to amend filed before 15 April 2013, other than those deemed under reg 10.6A to be filed on or after 15 April 2013.
• requests to amend filed on or after 15 April 2013 for:
• standard patent applications with an examination request filed before 15 April 2013, and standard patents granted on such applications.
• 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.
• standard patents granted, and innovation patents certified, before 15 April 2013.

For all other requests to amend, see 2.23.8.2A Section 102(1) Examination Practice.

In this topic:

Overview

Examination Considerations

Reporting on Amendments Not Allowable Under Section 102(1)

Overview

Under sec 102(1), an applicant or patentee in seeking to amend a complete specification is limited to amendments which do not result in a claim to matter not in substance disclosed in the specification as filed.

Further information on the meaning of sec 102(1) is provided in 2.23.8.1 The Section 102 Provisions Explained.

Note: Under sec 102(3), the provisions of sec 102(1) do not apply where an amendment is for the purpose of correcting a clerical error or an obvious mistake made in, or in relation to, a complete specification (see 2.23.10 "Clerical Error" and "Obvious Mistake").

Examination Considerations

In determining whether as a result of amendment a claim of the specification claims matter "in substance disclosed", the test for fair basis of a claim can be employed, i.e. the amended claim in effect must also be fairly based on the specification as filed.  Thus, there must be “a real and reasonably clear disclosure” of the claim as proposed to be amended when compared against the original disclosure (Burchett J in RGC Mineral Sands Pty Ltd v Wimmera Industrial Minerals Pty Ltd 42 IPR 353, accepting the principle of "a real and reasonably clear disclosure" set out in CCom Pty Ltd v Jiejing Pty Ltd 28 IPR 481; see also Ethyl Corporation's Patent (1972) RPC 169 at page 195).

Note: Objections that a proposed amendment is not allowable under sec 102(1) must include a reasoned explanation justifying this conclusion (see Reporting on Amendments Not Allowable Under Section 102(1) below).

Reporting on Amendments Not Allowable Under Section 102(1)

Where, as a result of a proposed amendment, the specification would claim matter not in substance disclosed in the specification as filed, the report should indicate that the proposed amendment is not allowable under sec 102(1) and provide a reasoned explanation.

Where an amendment proposed before or during examination is not allowable under sec 102(1), examination should only be conducted to the extent possible on those claims that define allowable subject matter.  No examination is to be conducted with respect to claimed matter not in substance disclosed in the specification as filed. Where only certain claims are examined, the report should clearly indicate which claims have been examined and include a statement that opinion is reserved in respect of those claims not examined.  

This is illustrated in the example below, where a proposed amendment results in the claiming of component B, which was not disclosed in the specification as filed.

Claim 1.  Composition containing A and a solvent.

Claim 2.  Composition containing A or B.

Claim 3.  Composition containing B.

Examination would be carried out on claim 1 and claim 2 in so far as it relates to a composition containing only A.  Opinion would be reserved with respect to claim 2 in so far as it relates to a composition containing only B and claim 3.

Specific Circumstances

Removing or Creating Ambiguity by Amendment

Existing ambiguity may be overcome by amendment, provided it is not resolved in such a manner as to result in a larger monopoly which was not in substance disclosed in the specification as filed (Chain Bar Mill Co. Ltd's Application (1941) 58 RPC 200).

Before acceptance, there is no provision to object to an amendment which introduces ambiguity into the specification where there was none previously.  However, during examination of the application, a clarity objection should be raised on the basis of the ambiguity.  After acceptance, an amendment that would result in non-compliance of the specification with sec 40(2) or sec 40(3) is not allowable under sec 102(2); see 2.23.9.6 Allowability Under Section 102(2)(b).

If the amendment itself is ambiguous, then an objection should be directed to the amendment.

Specific Integer or Specific Example

A specific integer or specific example is not necessarily in substance disclosed by a description of a generic class of which it is a member. For example, in Rose Bros. (Gainsborough) Ltd's Application (1960) RPC 247, claim 1 as originally filed was directed to a device for feeding articles and included as a feature "means for feeding the articles onto the surface of the feed member". The original specification disclosed (and defined) the "means for feeding" as being a vibrating device of the electromagnetic type which could be, but was not limited to being, controlled by a feeler member which could be arranged to operate a device for varying the rate of vibration of the electromagnetic device. The proposed amendments had the effect of limiting claim 1 (and the corresponding consistory clause) to a combination comprising a vibrating feed device and a feeler member controlling the operation. The amendments were considered not allowable on the basis that whereas the original specification did disclose the broad feature "means for feeding the articles" and the specific combination of the electromagnetic vibratory feeder and rate-controlling feeler member, it did not in substance disclose the combination of any type of vibrating feed device with a feeler member control.

Intermediate Generalisation

In certain circumstances, an amendment of a claim to an "intermediate generalisation" that falls between a general disclosure, and the specific examples described, is allowable. Thus in Matbro Ltd. v Michigan (G.B.) Ltd. (1973) RPC 823, original claim 1 covered shovel loaders in which the steering axis was situated at any point, whether between or outside the front and rear axles. Claim 2 defined a steering axis that was substantially midway between the axles. Amended claim 1 limited the axis to any point between the axles. It was held that the specification as a whole, including original claim 1, in substance disclosed the use of a steering axis which could be situated at any point between the axles and not merely midway as in original claim 2. The amendment was accordingly not an impermissible intermediate generalisation (see also Screen Printing Machinery Ltd's Application (1974) RPC 628).

Adding Further Examples

Where there are omnibus claims or other claims that refer to the description, a proposed amendment to include further examples or illustrations may not be allowable under sec 102(1).  Similarly, the meaning or scope of a generic claim may be affected by the addition of examples. In particular, where an amendment seeks to alter definitions of terms used in the claims, this may result in the claiming of matter not in substance disclosed in the specification as filed.

However, if further embodiments, examples or illustrations which fall within the framework of the original disclosure are added to the specification, the inclusion of that further material in a claim will generally be allowable.

Numerical Ranges

Ethyl Corporation's Patent (1972) RPC 169 provides an example of the allowability of amendments in relation to ranges. The invention was a mixture comprising tetramethyl lead and a selected hydrocarbon, in which the latter was present in various percentages from 43 to 80.  Examples of the mixtures were disclosed in the specification as filed.  Original claim 14 had no limit on the amount of hydrocarbon, claim 15 gave a percentage of about 80 and claim 16 a lower limit of 20% of a selected hydrocarbon. The amendment consisted of replacing claims 14, 15 and 16 with a new claim 14 directed to a mixture comprising tetramethyl lead and a selected hydrocarbon present in the range of 20-80%. The Court determined that this latter range was in substance disclosed and the amendment was consequently allowable.

Generic Class of Compounds

Where the claimed invention was a generic class of compounds defined in terms of a general formula, and illustrated in the specification by certain specific examples of the class, the generic reference and the "naming" of an individual compound did not in substance disclose other members of the class, or the "named" compound where new starting materials and departures from the previously disclosed production method were required (Shionogi and Co. Ltd's Application (1967) RPC 623).

Matter from Article 34 Amendments

Article 34 amendments filed during the international phase are deemed to amend the specification on the date those amendments were made (provided certain circumstances are met; see 2.20.10.1.1 General Provisions).  Thus, amendments of this type must be treated as having been already incorporated into the specification when national examination commences.  Therefore, examiners are not permitted to object to the allowability of such amendments under sec 102 during examination, even if those amendments have resulted in claims which claim matter not in substance disclosed in the specification as filed (see also 2.20.10.6 Amendments Resulting in a Claim to New Matter).

Matter from Documents Referred to in the Specification

For information on proposed amendments to insert cross-referenced material into the specification, see 2.11.3.7 Inclusion of References.

Translations

In the case of a national phase application where the PCT application as originally filed was in a foreign language, but a translation into English has been filed in order to enter the national phase, "the specification as filed" means the original foreign language PCT application and not the translation to which the foreign language application is taken to have been amended. This issue arose in Fina Research SA v Halliburton Energy Services Inc [2003] FCA 251. However, the judgement deals essentially with sec 102(2) criteria. In particular, while the judgement referred to an argument made to the effect that the substitution of the translation had effect from the international filing date, that argument:

i. was not accepted by the judge as such;

ii. would appear to be contrary to the express provisions of the legislation; and

iii. was not a determination that was required to be made to reach the decision made in the judgement (i.e. the comments were obiter).