General Requirements of the Description

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 General Requirements of the Description.

If the invention is or involves a life form, then a description of the life form is required in order to meet the requirements of sec 40(2).  This can be done either by describing the life form in words, drawings and/or sequence listings in the specification, or if the life form is a micro-organism, by making a deposit under the Budapest Treaty.  There must be enough detail in the specification for a person skilled in the art to identify and repeat the invention.

Description in Words

If the applicant chooses to fully describe a life form in words, then the specification must include a full description of the life form itself, as well as the best method of performing the invention known to the applicant.  The ‘best method of performing the invention’ refers to the method by which a living organism with the same traits as the organism of the invention may be reproduced (see Best Method of Performance of an Invention Involving a Life Form).

Where the invention resides in a new bacterial strain, animal or plant variety, or other micro-organism, the specification may require considerable detail.  This  may include, for example, a detailed description of the complete morphological, biochemical and taxonomic characteristics of the life form.  Further information regarding the requirements for plant varieties is provided in Some Specific Requirements for the Written Description of Plant Varieties.

Deposit Under the Budapest Treaty

If the applicant makes a deposit under the Budapest Treaty, this can be used to satisfy the requirements of a written description, including repeatability, under sec 41(1).  However, a deposit alone may not satisfy the requirements of sec 40(2)(a) and further information may be needed to fully describe the invention (see also 2.7.3 The Budapest Treaty).

Nature of the Invention

When the invention is a new living organism, in order for sec 40(2)(a) to be satisfied, it must be clear from the specification what the nature of the invention is.  This applies even if the applicant has made a deposit under the Budapest Treaty.  As discussed in Ranks Hovis McDougall Ltd's Application (1976) AOJP 3915, a new living organism must have altered properties that are useful in some manner, and not just be morphologically different from the prior art.  

The nature of the invention may not be clear from the description of the features or properties of the organism alone.  Where this occurs, the nature of the invention may be identified through, for example, a discussion of the advantages the organism possesses over the prior art, an unexpected result, the prior art problem solved or the intended purpose of the invention.  An intended purpose or use of a new organism must be more than a generic use which could be applied to other members of that species.  If the nature of the invention is not clear from the specification, then it may not have been fully described.  It may also not meet the manner of manufacture requirements (see Micro-Organisms and Other Life Forms and Useful (Utility)).

Other Considerations

The description of a plant or animal variety will usually contain the name of the new variety. Examiners should assume that where the name of a variety is derived from a person's name, permission from that person (or their legal representative) has been granted for the use of the name (sec 50(2)), unless there is some reason to doubt this.