2.7.2.1A General Requirements of the Description

Date Published

Note: The information in this part only applies to:

  • standard patent applications with an examination request filed on or after 15 April 2013.
  • innovation patents with an examination request filed on or after 15 April 2013.
  • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see 2.7.2.1 General Requirements of the Description.

If the invention is or involves a life form, then an enabling disclosure 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, graphics, photographs 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 sufficient information in the specification to enable the person skilled in the art to perform the claimed invention in a repeatable manner.

Description in Words

If the applicant chooses to describe a life form in words, then the specification must include a clear enough and complete enough disclosure 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 2.7.2.3 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 life form, the specification may require considerable detail.  This may include, for example, the full morphological, biochemical and taxonomic characteristics of the life form.  Further information regarding the requirements for plant varieties is provided in 2.7.2.2 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 clear enough and complete enough disclosure, 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 sufficiently enable a claimed invention (see 2.7.3 The Budapest Treaty).

Section 18 Considerations

Where the claimed invention is a new living organism, the usefulness requirements of sec 18(1)(c) must also be satisfied.  An intended purpose or use of a new organism needs to be more than a generic use which could be applied to other members of that species.  If the intended use is only a generic use, then a lack of usefulness objection may apply (see 2.9.3.4A Useful (Utility)).  

Claims to organisms may also not meet the manner of manufacture requirements (see 2.9.2.14 Micro-Organisms and Other Life Forms).

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.