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It is appropriate to use the consistory statement and words such as "must include", "necessarily", "preferably" and "for example", as indicators that a feature may be essential or inessential. However, examiners must not rely on random phrases and must have regard to the specification as a whole.

See, for example:

  • Populin v HB Nominees Pty Ltd (1982) 41 ALR 471 and;
  • Rhone-Poulenc Agrochimie SA v UIM Chemical Services (1985) AIPC 90–251.

The specification must be read and interpreted as it would be read and interpreted by the notional addressee. Consequently, examiners should consider not only whether a feature need be present at all in the broadest claim (i.e. is essential to the invention), but also whether the feature needs to be precisely as the claim specifies.

As stated in Catnic Components Ltd v Hill and Smith (1982) RPC 183 at page 243:

"A patent specification should be given a purposive construction rather than a purely literal one .... The question in each case is: whether persons with practical knowledge and experience of the kind of work in which the invention was intended to be used, would understand that strict compliance with a particular descriptive word or phrase appearing in a claim was intended by the patentee to be an essential requirement of the invention so that any variant would fall outside the monopoly claimed, even though it could have no material effect upon the way the invention worked."

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