- 2. About this Manual
- 2.1 Purpose of the Manual
- 2.2 Navigating the Manual
- 2.3 How our Practice and Procedures are Determined
- 2.4 Updating the Manual
- 4. Classification and Searching
- 4.1 Search Theory
- 4.2 Patent Classifications
- 4.2.1 Patent Classification Systems
- 126.96.36.199 International Patent Classification (IPC)
- 188.8.131.52.1 Structure of the IPC
- 184.108.40.206.2 Headings and Titles
- 220.127.116.11.3 Definitions, Warnings and Notes
- 18.104.22.168.4 Function-Oriented and Application-Oriented Places
- 22.214.171.124.5 References
- 126.96.36.199.6 Indexing Codes
- 188.8.131.52 Cooperative Patent Classification (CPC)
- 4.2.2 Principles of Classification
- 184.108.40.206 Invention Information and Additional Information
- 220.127.116.11.1 Application of Indexing Codes/2000 Series
- 18.104.22.168.2 Classifying in Residual Places
- 22.214.171.124.3 Places that cannot be the First Symbol
- 126.96.36.199 Classification Priority Rules
- 188.8.131.52.1 Common Rule
- 184.108.40.206.2 First Place Priority Rule
- 220.127.116.11.3 Last Place Priority Rule
- 18.104.22.168.4 Special Rules
- 22.214.171.124.5 Classifying a Combination of Technical Subjects
- 126.96.36.199 Classifying in Function-Oriented and Application-Oriented Places
- 188.8.131.52 Classifying Chemical Compounds
- 184.108.40.206 CPC Classification Rules
- 220.127.116.11 Classification using C-sets
- 4.2.3 Other Classification Information
- 18.104.22.168 Sub-Codes - Discontinued
- 22.214.171.124 The Australian Classification System - Discontinued
- 126.96.36.199 Indexing According to IPC Edition (2006) - Discontinued
- 188.8.131.52 Master Classification Database (MDC)
- 184.108.40.206 Recording Classification Symbols on Machine-Readable Records
- 220.127.116.11 Presentation of Classification Symbols and Indexing Codes on Patent Documents
- 4.3 Initial Search Considerations
- 4.3.1 Construction and the Inventive Concept
- 4.3.2 Earlier Search Results
- 4.3.3 Additional Searching
- 4.3.4 Top-Up Searching
- 4.3.5 Preliminary Search
- 4.3.6 Applicant and/or Inventor Name Searching
- 4.4 Development of the Search Strategy
- 4.4.1 Three Person Team (3PT)
- 4.4.2 Search Strategy Considerations
- 18.104.22.168 Independent Claims
- 22.214.171.124 Dependent Claims
- 126.96.36.199 Broad Claims
- 188.8.131.52 Reserving the Search
- 184.108.40.206 Controlled Language
- 4.4.3 Search Area
- 4.5 Conducting the Search
- 4.6 Recording the Search Details
- 4.7 Annexures
- Annex D - Search Information Statement
- Annex E - Examples and Instructions for completing the SIS for Sequence and Chemical Structure Searches
- Annex P - The Role of the Three Person Team (3PT) in Searching
- 4.8 User Guides
- 5. National
- 5.1 Procedures
- 5.2 Understanding Legislation
- 5.2.1 Modern Australian Law
- 5.2.2 Working with case law
- 5.2.3 Working with statute
- 5.2.4 Practical guide to interpreting legislation
- 5.3 Formalities and Forms
- 5.3.1 Formalities Checking
- 220.127.116.11 Formalities Required and Assessed at Filing
- 18.104.22.168 Credible Address for Service
- 22.214.171.124 Formalities Required and Assessed During Examination
- 5.3.2 Formal requirements of the Specification
- 126.96.36.199 Title of the Application
- 188.8.131.52 Abstracts
- 184.108.40.206 Requirements for Text, Pagination, Formulas, Equations, Drawings, Graphics, and Photographs
- 220.127.116.11 Substitute Pages to comply with formalities
- 18.104.22.168 Requirements for Amino Acid and Nucleotide Sequences
- 22.214.171.124 Scandalous Matter
- 5.3.3 Approved Forms (including patent request)
- 5.3.4 Signature Requirements for Forms and Other Documents
- 5.3.5 Return or Deletion of Documents
- 5.4 Entitlement
- 5.4.1 Who can file and who can be granted a patent
- 5.4.2 Statement of entitlement
- 5.4.3 Inventions Produced by Artificial Intelligence
- 5.4.4 Annex A - Examples of Legal Persons
- 5.4.5 Annex B - Examples of Organisations of Uncertain Status as Legal Persons
- 5.5 Construction of Specifications, Claims, and Claim Types
- 5.5.1 Purpose of Construction
- 5.5.2 Considerations Relevant to Construction of the Specification
- 126.96.36.199 Initial Considerations
- 188.8.131.52 The Addressee
- 184.108.40.206 The Role of Common General Knowledge
- 220.127.116.11 The Invention Described
- 5.5.3 Rules of Construction for a Specification
- 18.104.22.168 Words are Given Plain Meaning
- 22.214.171.124 Specification Read as a Whole
- 126.96.36.199 Purposive Construction
- 188.8.131.52 Dictionary Principle
- 184.108.40.206 Reject the Absurd
- 220.127.116.11 Description Construed as a Technical Document
- 18.104.22.168 Errors, Mistakes, Omissions
- 5.5.4 Claim Construction and Claim Types
- 22.214.171.124 Claims are Construed as a Legal Document
- 126.96.36.199 Presumption Against Redundancy
- 188.8.131.52 Omnibus Claims
- 184.108.40.206 Swiss Claims
- 220.127.116.11 Product by Process Claims
- 18.104.22.168 Parametric Claims
- 22.214.171.124 ‘For Use’, ‘When Used’ and Similar Wording in Claims
- 126.96.36.199 ‘Comprises‘, ‘Includes‘, ‘Consists of‘ and ‘Contains‘ and Similar Wording in Claims
- 188.8.131.52 Reference Numerals in Claims
- 184.108.40.206 Relative Terms
- 220.127.116.11 ‘Substantially‘, ‘About‘, ‘Generally’
- 18.104.22.168 Appended Claims
- 5.6 Examination
- 5.6.1 Relevant Dates, Definitions, Legal Standards and Other Prescribed Matters (e.g Publication)
- 22.214.171.124 Priority dates and Filing Dates
- 126.96.36.199 Effect of Publication
- 188.8.131.52 Definitions (Invention, Alleged Invention, Meaning of a Document etc.)
- 184.108.40.206 Balance of Probabilities Standard
- 220.127.116.11 Application of the Balance of Probabilities in Examination
- 5.6.2 Factors to consider before commencing examination
- 18.104.22.168 Request for Examination
- 22.214.171.124 Application in a State of Lapse?
- 126.96.36.199 Extension of Time Requested (s223 actions)
- 188.8.131.52 Payment of Fees
- 184.108.40.206 Translations of Specifications, Article 19 and Article 34 Amendments (Requirements for Certification, Poor Translations)
- 220.127.116.11 Obtaining Priority Documents
- 18.104.22.168 Report Dispatch, Correction of Report etc.
- 22.214.171.124 Further Report Considerations
- 126.96.36.199 Convention applications
- 5.6.3 The Specification and Claims to Examine
- 188.8.131.52 Consideration of Amendments Made prior to examination
- 184.108.40.206 Claims are directed to a Single Invention (Unity)
- 220.127.116.11 Omnibus claims – References to the Descriptions or Drawings
- 18.104.22.168 Provisional specifications - Examination
- 5.6.4 Citations: Prior Art Base and Construction of Prior Art
- 22.214.171.124 Prior Art - What is Included (Definition From the Act, Publicly Available, Exclusions, Grace Period)
- 126.96.36.199 Construing a Citation
- 188.8.131.52 Level of Disclosure Required (Enabling Disclosure, Clear and Unmistakable Directions etc)
- 184.108.40.206 Single Source of Information, Combination of Documents
- 220.127.116.11 Third Party Notifications
- 18.104.22.168 Identifying and Raising Citations
- 5.6.5 Novelty, Whole of Contents, Grace Periods, Secret Use
- 22.214.171.124 Determining Novelty
- 126.96.36.199 Whole of Contents
- 188.8.131.52 Prior Use, Secret Use and Confidential Information
- 184.108.40.206 Novelty - Specific Examples
- 220.127.116.11 Selections
- 18.104.22.168 Issues Specific to Chemical Compositions
- 5.6.6 Inventive Step
- 22.214.171.124 Inventive Step Requirements
- 126.96.36.199 Information for Assessing Inventive Step
- 188.8.131.52 Tests for Inventive Step
- 184.108.40.206 Assessing Inventive Step
- 220.127.116.11 Indicators of Inventive Step
- 18.104.22.168 Issues Specific to Chemical Compositions
- 5.6.7 Full Disclosure, Sufficiency, Clarity, Support and Usefulness (S40 considerations)
- 22.214.171.124 Claims are Clear and Succinct
- 126.96.36.199 Clear and Complete Disclosure s40(2)(a)
- 188.8.131.52 Support for the Claims s40(3)
- 184.108.40.206 Difference Between ‘Clear and Complete Disclosure’ and ‘Support’
- 220.127.116.11 Best Method
- 18.104.22.168 Complete Disclosure Micro-Organisms and Other Life Forms (Budapest Treaty, Deposit Requirements)
- 22.214.171.124 Claims define the Invention
- 126.96.36.199 Annex A - Examples: Subsections 40(2)(a) and 40(3)
- 5.6.8 Patent Eligible Subject Matter (Manner of Manufacture)
- 188.8.131.52 General Principles-Assessing Manner of Manufacture
- 184.108.40.206 Alleged Invention
- 220.127.116.11 Fine Arts
- 18.104.22.168 Discoveries, Ideas, Scientific Theories, Schemes and Plans
- 22.214.171.124 Printed Matter
- 126.96.36.199 Computer Implemented Inventions, Schemes and Business Methods
- 188.8.131.52 Games and Gaming Machines
- 184.108.40.206 Mathematical Algorithms
- 220.127.116.11 Methods of Testing, Observation and Measurement
- 18.104.22.168 Mere Working Directions
- 22.214.171.124 Nucleic Acids and Genetic Information
- 126.96.36.199 Micro-Organisms and Other Life Forms
- 188.8.131.52 Treatment of Human Beings
- 184.108.40.206 Human Beings and Biological Processes for Their Generation
- 220.127.116.11 Agriculture and Horticulture
- 18.104.22.168 Combinations, Collocations, Kits, Packages and Mere Admixtures
- 22.214.171.124 New Uses
- 126.96.36.199 Other Issues e.g. Contrary to Law, Mere Admixtures
- 188.8.131.52 Useful (Utility)
- 184.108.40.206 Annex A - History of Manner of Manufacture
- 5.6.9 Acceptance, Grant and Refusal of Applications
- 220.127.116.11 Conditions and Time for Acceptance
- 18.104.22.168 Postponement of Acceptance
- 22.214.171.124 Extension of Acceptance Period
- 126.96.36.199 Revocation of Acceptance
- 188.8.131.52 Refusal of Acceptance-Specific Circumstances
- 184.108.40.206 Refusal of an Application
- 220.127.116.11 Continued Examination-Result of a Decision
- 18.104.22.168 Lapsing of an Application
- 22.214.171.124 Withdrawal of an Application
- 126.96.36.199 Double Patenting - S64(2) and 101B(2)(h) - Multiple Applications
- 188.8.131.52 Parallel applications (applications for both innovation and standard)
- 184.108.40.206 Register of Patents
- 220.127.116.11 Annex A - Example Bar-to-Grant Letter (Accepted Despite Multiple Inventions)
- 18.104.22.168 Acceptance and QRS Issues
- 5.6.10 Divisional Applications
- 22.214.171.124 Requirements to Claim Divisional Status
- 126.96.36.199 Priority Entitlement
- 188.8.131.52 Time Limits for Filing
- 184.108.40.206 Status of the Parent
- 220.127.116.11 Examination of Divisional Applications
- 18.104.22.168 Innovation Divisional Applications
- 22.214.171.124 Annex A - Procedural Outline to Divisional Examination
- 5.6.11 Patents of Addition
- 126.96.36.199 Conditions for Filing
- 188.8.131.52 Improvement or Modification
- 184.108.40.206 Differentiation from the Parent
- 220.127.116.11 Examination of Additional Applications
- 18.104.22.168 Amendment of the Parent
- 22.214.171.124 Annex A - Procedural Outline to Patents of Addition Examination
- 5.6.12 Preliminary search and Opinion (PSO)
- 126.96.36.199 Requests for PSO
- 188.8.131.52 PSO - Search and Examination Procedure
- 184.108.40.206 PSO - Report Requirements
- 220.127.116.11 Response to the PSO
- 5.6.13 Re-Examination
- 18.104.22.168 Commencing Re-Examination
- 22.214.171.124 Re-Examination Process
- 126.96.36.199 Completion of Re-Examination
- 188.8.131.52 Refusal to Grant or Revocation Following Re-Examination
- 5.6.14 Secret Cases and Applications Involving Associated Technologies
- 184.108.40.206 Effect of Prohibition orders
- 220.127.116.11 Initial Handling - Secret cases
- 18.104.22.168 Allocation, Case Movement and Reporting - Secret cases
- 22.214.171.124 Prohibited Cases as Prior Art
- 126.96.36.199 Chapter 15 Applications (s 147 to 153)
- 5.6.15 Innovation Patents
- 188.8.131.52 The Innovation Patent System
- 184.108.40.206 Types of Innovation Patents
- 220.127.116.11 Formalities Check for Innovation Patents
- 18.104.22.168 Examination of Innovation Patents
- 22.214.171.124 Determining Innovative step
- 126.96.36.199 Certification, Opposition, Ceasing/Expiring of Innovation Patents
- 188.8.131.52 Annex - Innovation Patent Certification Form
- 5.6.16 Annex A - Procedural Outline for Full Examination of a Standard Patent Application
- 5.6.17 Annex B - Examination of National Phase Applications: Indicators of Special or Different Considerations
- 5.6.18 Annex C - Applicant and Inventor Details as Shown on PCT Pamphlet Front Page
- 5.6.19 Annex D - Example of PCT Pamphlet Front Page
- 5.7 Amendments
- 5.7.1 What can be Amended and When
- 184.108.40.206 What Documents can be Amended?
- 220.127.116.11 Who can Request Amendments (incl consent of licensees/mortgagees)?
- 18.104.22.168 When can Amendments be Requested?
- 22.214.171.124 Requirements to provide Reasons for Amendments
- 126.96.36.199 Withdrawal of Amendments
- 188.8.131.52 Circumstances where an amendment cannot be processed (i.e. pending court proceedings, Application has been Refused)
- 184.108.40.206 Granting Leave to Amend
- 220.127.116.11 Fees Associated with Amendments
- 18.104.22.168 Annex A - Guidelines for Completing the Voluntary Section 104 Allowance Form
- 5.7.2 Amendment of the Patent Request and Other Filed Documents
- 22.214.171.124 Form of the Request to Amend the Patent Request
- 126.96.36.199 Non-Allowable Amendments to Patent Request
- 188.8.131.52 Changing the Applicant or Nominated Person
- 184.108.40.206 Converting the Application
- 220.127.116.11 Amendments to the Notice of Entitlement and Other Documents
- 5.7.3 Amendments-Provisional Applications
- 5.7.4 Amendments to Complete Specifications
- 18.104.22.168 Form of proposed amendments (statement of proposed amendments)
- 22.214.171.124 Allowability of Amendments Prior to Acceptance
- 126.96.36.199 Allowability of Amendments After Acceptance
- 188.8.131.52 Allowability of Amendments After Grant
- 184.108.40.206 Amendments not Otherwise Allowable
- 220.127.116.11 Opposition to Amendments
- 18.104.22.168 Annex A - Amended Claims Format
- 5.7.5 Amendments to Correct a Clerical Error or Obvious Mistake
- 22.214.171.124 Definition of Clerical Error
- 126.96.36.199 Definition of Obvious Mistake
- 188.8.131.52 Evidence required to prove a Clerical Error or Obvious Mistake
- 5.7.6 Amendments Relating to Micro-Organisms and Sequence Listings
- 184.108.40.206 Insertion or Alteration of Sec 6(c) Information
- 220.127.116.11 Amendments or Corrections of Sequence Listings
- 5.7.7 Amendments during Opposition Proceedings
- 18.104.22.168 Initial Processing of the Request to Amend During Oppositions
- 22.214.171.124 Considering the Amendments and Comments from the Opponent
- 126.96.36.199 Considering Amendments as a Result of a Hearing Decision
- 188.8.131.52 Amendments where Decision of the Commissioner is Appealed
- 184.108.40.206 Annex A - Section 104 Amendments During Opposition Proceedings: Check Sheet
- 6. International
- 6.1 International Searching
- 6.1.1 Procedural Outline - PCT International Search
- 6.1.2 Introduction- International Searching
- 220.127.116.11 Overview- International Searching
- 18.104.22.168 Overview-International Search Opinion (ISO)
- 22.214.171.124 General Procedures
- 126.96.36.199 Extent of Search
- 188.8.131.52 Minimum Documentation
- 184.108.40.206 Examination Section Procedures
- 220.127.116.11 Searching Examiner
- 18.104.22.168 Other Considerations
- 22.214.171.124 Copending Applications
- 6.1.3 Search Allocation and Preliminary Classification
- 6.1.4 Unity of Invention
- 126.96.36.199 Unity of Invention Background
- 188.8.131.52 Determining Lack of Unity
- 184.108.40.206 Combinations of Different Categories of Claims
- 220.127.116.11 Markush Practice
- 18.104.22.168 Intermediate and Final Products in Chemical Applications
- 22.214.171.124 Biotechnological Inventions
- 126.96.36.199 Single General Inventive Concept
- 188.8.131.52 A Priori and A Posteriori Lack of Unity
- 184.108.40.206 Issuing the Invitation to Pay Additional Search Fees
- 220.127.116.11 Unsupported, Unclear, Long and/or Complex Claim Sets with Clear Lack of Unity
- 18.104.22.168 Payment of Additional Search Fees Under Protest
- 22.214.171.124 Completing the Search Report
- 126.96.36.199 Time for Completing the Search Report
- 188.8.131.52 Reported Decisions
- 184.108.40.206 Other Decisions from the EPO
- 6.1.5 Abstract and Title
- 6.1.6 Subjects to be Excluded from the Search
- 6.1.7 Claim Interpretation, Broad Claims, PCT Articles 5 and 6
- 220.127.116.11 Claim Interpretation According to the PCT Guidelines
- 18.104.22.168.1 PCT Guideline References and Flow Chart
- 22.214.171.124.2 Overview of the Hierarchy
- 126.96.36.199.3 Special Meaning, Ordinary Meaning, Everyday Meaning
- 188.8.131.52.4 Closed and Open Definitions and Implications for Interpretation
- 184.108.40.206.5 Implications of the Hierarchy on Searching
- 220.127.116.11.6 PCT GL Appendix Paragraphs 5.20 and 5.20
- 18.104.22.168.7 Interpretation of Citations - Inherency
- 22.214.171.124 Broad Claims
- 126.96.36.199 PCT Articles 5 and 6
- 188.8.131.52 Claims Lacking Clarity and Excessive/Multitudinous Claims
- 184.108.40.206 Procedure for Informal Communication with the Applicant
- 6.1.8 Search Strategy
- 220.127.116.11 Introduction
- 18.104.22.168 The Three Person Team (3PT)
- 22.214.171.124 Area of Search
- 126.96.36.199 Search Considerations
- 6.1.9 Basis of the Search
- 6.1.10 Non-Patent Literature
- 6.1.11 Search Procedure
- 188.8.131.52 Overview - Novelty / Inventive Step
- 184.108.40.206 Inventive Step
- 220.127.116.11 Searching Product by Process Claims
- 18.104.22.168 Dates Searched
- 22.214.171.124 Conducting the Search
- 126.96.36.199 Useful Techniques ("piggy back/forward" searching)
- 188.8.131.52 Obtaining Full Copies
- 184.108.40.206 Considering and Culling the Documents
- 220.127.116.11 Ending the Search
- 18.104.22.168 Categorising the Citations
- 22.214.171.124 Grouping the Claims
- 6.1.12 Search Report and Notification Form Completion
- 126.96.36.199 Background Search Report and Notification Form Completion
- 188.8.131.52 Applicant Details
- 184.108.40.206 General Details
- 220.127.116.11 Fields Searched
- 18.104.22.168 Documents Considered to be Relevant
- 22.214.171.124.1 Selection of Documents Considered to be Relevant
- 126.96.36.199.2 Citation Category
- 188.8.131.52.3 Citation of Prior Art Documents
- 184.108.40.206.4 Citation of URLs
- 220.127.116.11.5 Citation Examples
- 18.104.22.168.6 Citing Patent Documents Retrieved from EPOQUE
- 22.214.171.124.7 Relevant Claim Numbers
- 126.96.36.199 Family Member Identification
- 188.8.131.52 Date of Actual Completion of the Search
- 184.108.40.206 Refund Due
- 220.127.116.11 Contents of Case File at Completion
- 6.1.13 Reissued, Amended or Corrected ISRs and ISOs
- 6.1.14 Priority Document
- 6.1.15 Foreign Patent Search Aids and Documentation
- 6.1.16 Assistance with Foreign Languages
- 6.1.17 Rule 91 Obvious Mistakes in Documents
- 6.1.18 Nucleotide and/or Amino Acid Sequence Listings
- 18.104.22.168 Background Nucleotide and/or Amino Acid Sequence Listings
- 22.214.171.124 Office Practice
- 126.96.36.199 Summary
- 6.1.19 Annexes
- Annex A - Blank ISR
- Annex B - Completed ISR
- Annex C - Completed ISR
- Annex D - Declaration of Non-Establishment of ISR
- Annex E - Completed Invitation to pay additional fees
- Annex F - Completed ISR with unity observations
- Annex H - Searching Broad Claims
- Annex I - Completed notification of change of abstract
- Annex J - Completed notification of decision concerning request for rectification
- Annex K - The role of the 3 Person Team in Searching
- Annex S - Refund of Search Fees
- Annex U - ISR Quality Checklist
- Annex V - Internet Searching
- Annex W - Obtaining full text from internet
- Annex Z - USPTO kind codes
- Annex AA - Markush Claims
- Annex BB - Article 5/6 Comparisons
- 6.2 International Type Searching
- 6.2.1 Procedural Outline International Type Search Report
- 6.2.2 Introduction - International Type Searching
- 6.2.3 Classification and Search Indication
- 6.2.4 Unity of Invention
- 6.2.5 Subjects to be Excluded from the Search
- 6.2.6 Obscurities, Inconsistencies or Contradictions
- 6.2.7 Abstract and Title
- 6.2.8 Search Report
- 6.2.9 Completing Search Report and Opinion Form
- 6.2.10 Annexes
- 6.3 International Examination
- 6.3.1 Procedural Outline Written Opinion
- 6.3.2 Introduction International Examination
- 6.3.3 The Demand and IPRPII
- 6.3.4 Top-up Search
- 6.3.5 First IPE action
- 188.8.131.52 Introduction - First IPE Action
- 184.108.40.206 Supplementary International Search Report
- 220.127.116.11 PCT Third Party Observations
- 6.3.6 Response to Opinion
- 6.3.7 IPRPII and Notification
- 6.3.8 Completing ISO, IPEO and IPRPII Forms
- 18.104.22.168 Front Page and Notification Application Details
- 22.214.171.124 Box I Basis of Opinion/Report for ISOs, IPEOs and IPRPs
- 126.96.36.199 Box II Priority
- 188.8.131.52 Box III Non-establishment of Opinion
- 184.108.40.206 Box IV Unity of Invention
- 220.127.116.11 Box V Reasoned Statement Regarding Novelty, Inventive Step & Industrial Applicability
- 18.104.22.168 Box VI Certain Documents Cited
- 22.214.171.124 Box VII Certain Defects
- 126.96.36.199 Box VIII Certain Observations
- 6.3.9 General Considerations
- 188.8.131.52 Article 19 or Article 34(2)(b) Amendments
- 184.108.40.206 Formalities
- 220.127.116.11 General Notes on Form Completion
- 18.104.22.168 Rule 91 Obvious Mistakes in Documents
- 22.214.171.124 Processing withdrawals of PCTs
- 6.3.10 Annexes
- Annex A - Written Opinion-ISA
- Annex B - Written Opinion-IPEO
- Annex C - Notification of Transmittal of IPERII
- Annex D - IPRPII
- Annex E - IPRPII Clear Novel and Inventive Box V Only
- Annex F - Invitation to Restrict/Pay Additional Fees - Unity
- Annex G - Extension of Time Limit
- Annex H - IPE Quality Checklist
- Annex I - Examples of Inventive Step Objections
- Annex J - Examples of Objections under PCT Articles 5 and 6
- Annex K - Example of PCT Third Party Observations
- Annex L - Blank Written Opinion - ISA
- Annex M - Blank Written Opinion - IPEO
- Annex N - Blank IPRPII
- Annex O - ISO/ISR with Omnibus Claims
- Annex P - PCT Timeline
- Annex Z - Best Practice Examples
- 6.4 Fiji Applications
- 6.4.1 Introduction
- 6.4.2 Completion Time and Priority
- 6.4.3 Initial Processing
- 6.4.4 Search Procedure
- 6.4.5 Search Report and Advisory Opinion
- 6.4.6 Further Advisory Opinion
- 6.4.7 Final Processing
- 6.4.8 Annexes
- 6.5 Thai Applications
- 6.5.1 Introduction to Thai Applications
- 6.5.2 Completion Time and Priority Thai
- 6.5.3 Initial Processing Thai
- 6.5.4 Search Procedure Thai
- 6.5.5 Search Report Thai
- 6.5.6 Final Processing Thai
- 6.5.7 Annex A - Thai Search Report
- 6.6 WIPO Searches
- 6.6.1 Introduction
- 6.6.2 Completion Time and Priority
- 6.6.3 Initial Processing
- 6.6.4 Search Procedure
- 6.6.5 Search Report
- 6.6.6 Final Processing
- 6.6.7 Annexes
- 6.7 Other Countries
- 6.8 PCT Articles, Regulations and Guidelines et al
- 6.9 Miscellaneous
- 7. Oppositions, Disputes and Extensions
- 7.1 Role and Powers of the Commissioner in Hearings
- 7.2 Oppositions, Disputes and other proceedings-Procedural summaries
- 7.2.1 Oppositions to grant of a standard patent-Section 59 oppositions
- 126.96.36.199 Commencing the Opposition - Filing a Notice of Opposition
- 188.8.131.52 Filing the Statement of Grounds and Particulars
- 184.108.40.206 Evidence and Evidentiary Periods
- 220.127.116.11 Finalising the Opposition
- 7.2.2 Opposition to Innovation Patents-Section 101M Oppositions
- 18.104.22.168 Commencing the Opposition - Filing the Opposition Documents
- 22.214.171.124 Evidence and Evidentiary Periods
- 126.96.36.199 Finalising the Opposition
- 7.2.3 Oppositions to an Extension of Term of a Pharmaceutical Patent (Section 75(1) Oppositions)
- 188.8.131.52 Commencing the Opposition - Filing a Notice of Opposition
- 184.108.40.206 Filing the Statement of Grounds and Particulars
- 220.127.116.11 Evidence and Evidentiary Periods
- 18.104.22.168 Finalising the Opposition
- 7.2.4 Oppositions to Request to Amend an Application or Other Filed Document (Section 104(4) Oppositions)
- 22.214.171.124 Commencing the Opposition - Filing a Notice of Opposition
- 126.96.36.199 Filing the Statement of Grounds and Particulars
- 188.8.131.52 Evidence and Evidentiary Periods
- 184.108.40.206 Finalising the Opposition
- 7.2.5 Oppositions to Extensions of Time Under Section 223 (Section 223(6) Oppositions
- 220.127.116.11 Commencing the Opposition - Filing a Notice of Opposition
- 18.104.22.168 Filing the Statement of Grounds and Particulars
- 22.214.171.124 Evidence and Evidentiary Periods
- 126.96.36.199 Finalising the Opposition
- 7.2.6 Oppositions to Grant of a Licence (Regulation 22.21(4) Oppositions)
- 188.8.131.52 Commencing the Opposition - Filing a Notice of Opposition
- 184.108.40.206 Filing the Statement of Grounds and Particulars
- 220.127.116.11 Evidence and Evidentiary Periods
- 18.104.22.168 Finalising the Opposition
- 7.2.7 Disputes Between Applicants and Co-Owners (Directions Under Section17 and Determinations Under Section 32)
- 7.2.8 Entitlement Disputes (Applications Under Sections 33-36 and 191A)
- 7.3 Directions
- 7.3.1 Directions in Opposition Proceedings
- 22.214.171.124 Direction to Stay an Opposition Pending Another Action
- 126.96.36.199 Further and Better Particulars
- 188.8.131.52 Time for Filing Evidence in a Substantive Opposition
- 184.108.40.206 Time for Filing Evidence in a Procedural Opposition
- 220.127.116.11 General Conduct of Proceedings
- 18.104.22.168 Further Directions
- 7.3.2 Directions that an Application Proceed in Different Name(s) - Section 113
- 7.4 Opposition Documents, Requirements and Amendments
- 7.4.1 Notice of Opposition
- 7.4.2 Statement of Grounds and Particulars
- 7.4.3 Amending Opposition Documents
- 7.4.4 Filing of Opposition Documents
- 7.5 Evidence
- 7.5.1 Presentation of Evidence
- 22.214.171.124 Written Evidence and Declarations
- 126.96.36.199 Oral Evidence
- 188.8.131.52 Physical Evidence - Special Considerations
- 7.5.2 Admissibility of Evidence
- 7.5.3 Evidence Filed Out of Time
- 7.6 Production of Documents, Summonsing Witnesses
- 7.6.1 Requests for Commissioner to Exercises Powers Under Section 210(1)(a) & 210(1)(c)
- 7.6.2 Basis for Issuing a Summons
- 7.6.3 Basis for Requiring Production of Documents or Articles
- 7.6.4 Reasonable Expenses
- 7.6.5 Complying with the Summons or Notice to Produce, Reasonable Excuses
- 7.6.6 Sanctions for Non-Compliance
- 7.6.7 Schedule to Requests for Summons or Notice to Produce
- 7.7 Withdrawal and Dismissal of Oppositions
- 7.7.1 Withdrawal of an Opposition
- 7.7.2 Dismissal of an Opposition
- 184.108.40.206 Requests for Dismissal
- 220.127.116.11 Dismissal on the Initiative of the Commissioner
- 18.104.22.168 Reasons for Dismissal
- 7.7.3 Withdrawal of an Opposed Application
- 7.8 Hearings and Decisions
- 7.8.1 Setting Down Hearings
- 22.214.171.124 Setting of Hearing
- 126.96.36.199 Location and Options for Appearing
- 188.8.131.52 Hours of a Hearing
- 184.108.40.206 Hearing Fee
- 220.127.116.11 Who May Appear at a Hearing?
- 18.104.22.168 Relevant Court Actions Pending
- 7.8.2 Hearings Procedure
- 22.214.171.124 Overview of Proceedings
- 126.96.36.199 Adjournment of Hearings
- 188.8.131.52 Contact with Parties Outside of Hearing
- 184.108.40.206 Hearings Involving Confidential Material
- 220.127.116.11 Consultation with Other Hearing Officers
- 18.104.22.168 Hearings and the Police
- 7.8.3 Ex Parte Hearings
- 7.8.4 Natural Justice and Bias
- 22.214.171.124 Rules
- 126.96.36.199 Waiving of Objection of Bias by Standing by until Decision Issued
- 188.8.131.52 Bias as a Result of Contact with Parties Outside of Hearing
- 184.108.40.206 Bias as a Result of Other Proceedings Involving the Same Parties
- 7.8.5 Principles of Conduct
- 220.127.116.11 Lawfulness
- 18.104.22.168 Fairness
- 22.214.171.124 Rationality
- 126.96.36.199 Openness
- 188.8.131.52 Diligence and Efficiency
- 184.108.40.206 Courtesy and Integrity
- 7.8.6 Decisions
- 220.127.116.11 Written Decisions
- 18.104.22.168 Time for Issuing a Decision
- 22.214.171.124 Publication of Decisions
- 126.96.36.199 Rectification of Errors or Omissions in Decisions
- 188.8.131.52 Revocation of Decisions
- 7.8.7 Further Hearings
- 7.8.8 Final Determinations
- 184.108.40.206 Overview of Proceedings
- 220.127.116.11 Applicant Does Not Propose Amendments
- 18.104.22.168 Opponent Withdraws the Opposition
- 7.8.9 Quality
- 7.8.10 Appointment of Hearing Officers and Assistant Hearing Officers, Hearing Officer Standards Panel, Hearing Officer Delegations
- 7.9 Costs
- 7.9.1 Principles in Awarding Costs
- 7.9.2 Scale of Costs, Variation of the Scale
- 7.9.3 Awarding Costs, Taxation
- 7.9.4 Security for Costs
- 7.9.5 Exemplary Situations in Awarding Costs
- 7.10 The Register of Patents
- 7.10.1 What is the Register
- 7.10.2 Recording Particulars in the Register
- 22.214.171.124 Recording New Particulars in the Register
- 126.96.36.199 Change of Ownership
- 188.8.131.52.1 Assignment
- 184.108.40.206.2 Change of Name
- 220.127.116.11.3 Bankruptcy
- 18.104.22.168.4 Winding Up of Companies
- 22.214.171.124.5 Death of Patentee
- 126.96.36.199 Security Interests
- 188.8.131.52 Licences
- 184.108.40.206 Court Orders
- 220.127.116.11 Equitable Interests
- 18.104.22.168 Effect of Registration or Non-Registration
- 22.214.171.124 Trusts
- 126.96.36.199 False Entries in the Register
- 7.10.3 Amendment of the Register
- 188.8.131.52 Procedure on Receipt of an Application for Recitification
- 184.108.40.206 Amendment of Errors (excluding Entitlement Disputes) - Subsection 191A(1)
- 220.127.116.11 Entitlement Disputes - Subsection 191A(2)
- 18.104.22.168 Section 192
- 7.11 Extensions of Time and Restoration of Priority
- 7.11.1 Extensions of Time - Section 223
- 22.214.171.124 Relevant Act
- 126.96.36.199 Subsection 223(1) - Office Error
- 188.8.131.52.1 Extensions under Subsection 223(1) to Gain Acceptance
- Annex A - Section 223(1) Extension of Time for Acceptance File Note
- 184.108.40.206 Subsection 223(2) - Error or Omission and Circumstances Beyond Control
- 220.127.116.11.1 The Law
- 18.104.22.168.2 Subsection 223(2)(a) - Error or Omission
- 22.214.171.124.3 Section 223(2)(b) - Circumstances Beyond Control
- 126.96.36.199.4 Filing a Request under Subsection 223(2)
- 188.8.131.52.5 The Commissioner's Discretion
- 184.108.40.206 Subsection 223(2A) - Despite Due Care
- 220.127.116.11 Common Deficiencies in Requests under Section 223(2) or (2A)
- 18.104.22.168 Advertising an Extension - Subsection 223(4)
- 22.214.171.124 Extension of Time for an Extension of Term
- 126.96.36.199 Grace Period Extensions
- 188.8.131.52 Extension of Time to Gain Acceptance
- 184.108.40.206 Examination Report Delayed or Not Received
- 220.127.116.11 Co-pending Section 104 Application - Budapest Treaty Details
- 18.104.22.168 Payment of Continuation or Renewal Fees Pending a Section 223 Applicaiton
- 22.214.171.124 Person Concerned: Change of Ownership
- 126.96.36.199 Date of a Patent Where an Extension of Time is Granted to Claim Priority
- 7.11.2 Extensions of Time - Reg 5.9
- 188.8.131.52 Requesting an Extension of Time
- 184.108.40.206 Application of the Law
- 220.127.116.11 Justification for the Extension
- 18.104.22.168 Discretionary Matters
- 22.214.171.124 Period of an Extension
- 126.96.36.199 A Hearing in Relation to an Extension
- 188.8.131.52 Parties Involved in Negotiations
- 184.108.40.206 Review of a Decision to Grant or Refuse an Extension
- 220.127.116.11 "Out of Time" Evidence
- 7.11.3 Extensions of Time - Reg 5.10 (as in force immediately before 15 April 2013)
- 18.104.22.168 Extensions under Reg 5.10(1)
- 22.214.171.124 Extensions under Reg 5.10(2)
- 7.11.4 Restoration of the Right of Priority Under the PCT
- 7.12 Extensions of Term of Standard Patents Relating to Pharmaceutical Substances
- 7.12.1 Section 70 Considerations
- 126.96.36.199 Pharmaceutical Substance per se
- 188.8.131.52 Meaning of Pharmaceutical Substance
- 184.108.40.206 Meaning of "when produced by a process that involves the use of recombinant DNA technology"
- 220.127.116.11 Meaning of "mixture or compound of substances"
- 18.104.22.168 Meaning of "in substance disclosed"
- 22.214.171.124 Meaning of "in substance fall within the scope of the claim"
- 126.96.36.199 Included in the Goods
- 188.8.131.52 First Regulatory Approval Date
- 7.12.2 Applying for an Extension of Term
- 184.108.40.206 Documentation Required
- 220.127.116.11 Time for Applying
- 18.104.22.168 Extension of Time to Apply for an Extension of Term
- 7.12.3 Processing an Application for an Extension of Term
- 22.214.171.124 Initial Processing
- 126.96.36.199 Consideration of the Application
- 188.8.131.52 Grant of Application for Extension of Term
- 184.108.40.206 Refusal of Application for Extension of Term
- 7.12.4 Calculating the Length of the Extension of Term
- 7.12.5 Patents of Addition
- 7.12.6 Divisional Applications
- 7.12.7 Oppositions to an Extension of Term
- 7.12.8 Relevant Court Proceedings Pending
- 7.12.9 Rectification of the Register
- 7.13 Orders for Inspection of non OPI Documents
- 7.13.1 Documents not-OPI by direction of the Commissioner - Regulation 4.3(2)(b)
- 7.13.2 Inspection of non-OPI Documents
- 7.14 Appeals AAT, ADJR, The Courts
- 7.14.1 Appeals to the Federal Court
- 7.14.2 AAT Review
- 7.14.3 Judicial Review (ADJR)
- 7.14.4 Other Court Actions Involving the Commissioner
- 7.14.5 Section 105 Amendments
- 7.15 Computerised Decisions
- 8. Superseded Legislation
- 8.1 Summary of Relevant Legislative Changes
- 8.2 General Approach to Examination
- 8.2.1 Restriction of the Report
- 8.2.2 Not All Claims Previously Searched and/or Examined
- 8.2.3 Law and Practice Differences
- 8.3 Amendments
- 8.3.1 Allowability of Amendments to Complete Specifications
- 8.3.2 Allowability Under Section 102(1)
- 8.3.3 Allowability Under Section 102(2) - General Comments
- 8.3.4 Amendments to a Provisional Specification
- 8.3.5 Opposition to Amendments - Standard Patents
- 8.4 Novelty
- 8.4.1 Introduction
- 8.4.2 Prior Art Information
- 8.4.3 Exclusions
- 8.4.4 Doctrine of Mechanical Equivalents
- 8.4.5 Basis of the "Whole of Contents" Objection
- 8.5 Inventive Step
- 8.5.1 The Statutory Basis for Inventive Step
- 8.5.2 Prior Art Base
- 8.5.3 Assessing Inventive Step in Examination
- 8.5.4 Common General Knowledge
- 8.5.5 Determining the Problem
- 8.5.6 Identifying the Person Skilled in the Art
- 8.5.7 Could the PSA have Ascertained, Understood, Regard as Relevant and Combined the Prior Art Information
- 220.127.116.11 Ascertained
- 18.104.22.168 Understood
- 22.214.171.124 Regarded as Relevant
- 126.96.36.199.1 Document Discloses the Same, or a Similar, Problem
- 188.8.131.52.2 Document Discloses a Different Problem
- 184.108.40.206.3 Age of the Document
- 220.127.116.11.4 Would the Person Skilled in the Art Have Used the Document to Solve the Problem
- 18.104.22.168 Does the Document Constitute a Single Source of Information
- 22.214.171.124 Could the PSA be Reasonably Expected to Have Combined the Documents to Solve the Problem
- 8.6 Innovative Step
- 8.6.1 Grounds of Examination
- 8.6.2 Innovative Step
- 8.7 Section 40 Specifications
- 8.7.1 Overview
- 8.7.2 What is the Invention?
- 126.96.36.199 General Considerations
- 188.8.131.52 Approach in Lockwood v Doric
- 184.108.40.206 Consistory Clause
- 220.127.116.11 Requirement for Critical Analysis
- 18.104.22.168 "Essential Features" of the Invention
- 8.7.3 Full Description - Best Method
- 22.214.171.124 Date for Determining Full Description
- 126.96.36.199 Can the Nature of the Invention be Ascertained?
- 188.8.131.52 Compliance with Subsection 40(2) is a Question of Fact
- 184.108.40.206 Enabling Disclosures
- 220.127.116.11 Effort Required to Perform the Invention
- 18.104.22.168 Different Aspects Claimed in Different Claims
- 22.214.171.124 Inclusion of References
- 126.96.36.199 Trade Marks in Specifications
- 188.8.131.52 Colour Drawings and Photographs
- 8.7.4 Claims Define the Invention
- 8.7.5 Claims are Fairly Based
- 184.108.40.206 General Principles
- 220.127.116.11 Sub-Tests for Fair Basis
- 18.104.22.168 Relation Between the Invention Described and the Invention Claimed
- 22.214.171.124 Only Disclosure is in a Claim
- 126.96.36.199 Alternatives in a Claim
- 188.8.131.52 Claiming by Results
- 184.108.40.206 Reach-Through Claims
- 220.127.116.11 Claims to Alloys
- 8.7.6 Provisional Specifications
- 8.7.7 Complete Applications Associated with Provisional Applications
- 8.8 Patentability Issues
- 8.9 Abstracts
- 8.10 Divisional Applications
- 8.10.1 Application
- 8.10.2 Priority Entitlement
- 8.10.3 Time Limits for Filing Applications
- 8.10.4 Subject Matter
- 8.10.5 Amendment of Patent Request - Conversion of Application to a Divisional
- 8.10.6 Case Management of Divisional Applications
- 8.11 Priority Dates and Filing Dates
- 8.11.1 Priority Date of Claims
- 8.11.2 Priority Date Specific to Associated Applications (Priority Dociment is a Provisional)
- 8.11.3 Priority Date Issues Specific to Convention Applications
- 8.11.4 Priority Date Issues Relating to Amended Claims
- 8.12 Examination
- 8.13 Modified Examination
- 8.14 Petty Patents
- 8.15 National Phase Applications
- 8.15.1 Key Features of the Legislation
- 8.15.2 National Phase Preliminaries
- 8.15.3 Formality Requirements
- 8.15.4 Priority Sources
- 8.15.5 Determining Whether Amendments Made Under Articles and Rules of the PCT are Considered During Examination
- 8.15.6 Amendments During Examination
- 8.16 Convention Applications
- 8.16.1 Convention Country Listing
- 8.16.2 Convention Country Status Change
- 8.16.3 Basic Application Outside 12 Month Convention Period
- 8.16.4 Convention Priority Dates
- 8.17 Patent Deed
18.104.22.168 Clear enough and complete enough disclosure s40(2)(a)
Also in this Chapter:
- s40(2) Disclose the invention in a manner which is clear enough and complete enough
- s40(3) Claims must be clear and succinct and supported
- s102 What amendments are not allowable?
- s223 Extensions of time
Other referenced materials:
- Explanatory Memorandum Intellectual Property Laws Amendment (Raising the Bar) Bill 2011
PCT Articles & Rules:
- 22.214.171.124 The Addressee (Identifying the person skill in the art),
- 5.5.3 Rules of construction for a patent specification
- 5.5.4 Claim construction and claim types
- 126.96.36.199 Support for the Claims
- 188.8.131.52 Disclosure of Micro-organisms
- 184.108.40.206 Trade marks in specifications
- 220.127.116.11 Substitute documents
- 18.104.22.168 Allowability under section 102(1)
- 5.6.8 Manner of manufacture
- 22.214.171.124 Useful (Utility)
On this page
- Relevant date
- Examination Practice
- Enabling disclosure:
- Principle of general application
- Undue Burden
- Clarity of disclosure
- Specific scenarios and claim types:
- Discrete methods or products must be individually enabled
- Claiming by result
- Individual features defined by function
- Parametric claims
- Reach-through claims
- Reliance on cross-references
- Trade marks in specifications
- Colour drawings, graphics, and photographs
- Relative terms
- Cyclic inventions
- Contravention of laws of nature
- Claims as the basis of disclosure
- Objections under s.40(2)(a):
- Legal Principles:
Subsection 40(2)(a) states that a complete specification (description, claims, and drawings) must ‘disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art’.
This provision reflects a fundamental principle of international patent law; in exchange for the exclusive rights given to the patentee, the patentee must share with the public the information necessary to make and use the invention.
The complete specification must provide sufficient information to enable the skilled person to perform the invention over the whole width of the claims, without undue burden or the need for further invention.
This is often referred to as sufficiency.
Sufficiency is most likely to relate to one of the two following circumstances:
- Classical insufficiency where the teaching of the patent does not enable the skilled person to perform the invention without the need for further invention, or where “prolonged research, enquiry or experiment” is required in order to work the invention; or
- Insufficiency by excessive claim breadth (sometimes referred to as Biogen insufficiency) where there may be an enabling disclosure for something falling within the scope of the claim, but not across the full breadth of the claim.
The specification must have the necessary information to satisfy the requirement of being clear enough and complete enough at the filing date of the complete specification. This is the practical effect of s102(1), which is that an insufficient disclosure cannot be rectified by adding new matter after the filing date of the application.
Compliance with s40(2)(a) is determined taking into account the common general knowledge of the person skilled in the art at the filing date.
Where the invention involves biological material, the applicant may rely on a deposit made under the Budapest Treaty to meet the clear enough and complete enough disclosure requirement. A deposit under the Budapest Treaty must be made on or before the filing date of the complete application. However, to gain the earliest possible priority date, the deposit should be made on or before the filing date of the priority document.
Late filing of a deposit under the Budapest Treaty cannot be rectified by an extension of time under s223 (as there is no relevant time period to be extended), nor overcome by filing a divisional application. (see 126.96.36.199 Complete Disclosure Micro-Organisms and Other Life Forms (Budapest Treaty))
Compliance with s40(2)(a) is a question of fact. Whether a specification discloses a method that will actually perform the invention is a matter which can best be determined by receiving evidence from the person skilled in the art (Universal Oil Products Co. v Monsanto (1972) 46 ALJR 658). If the specification, on its face, would appear to the person skilled in the art to lack a clear enough and complete enough disclosure, the onus of establishing that the invention is described in sufficient detail lies with the applicant. (Explanatory Memorandum).
While the sufficiency requirement must be satisfied at the filing date, post filing evidence may be used to establish the common general knowledge at the filing date and how the skilled person would understand the teaching of the specification as filed (BASF Corporation  APO 34).
Arguments that a particular feature or step would be “obvious” based on common general knowledge are unlikely to overcome a sufficiency objection. Sufficiency is based on the disclosure given in the complete specification as filed. While the PSA would read this information with the common general knowledge in the art to help them understand the invention described, this does not go so far as to supplement, or add to, the disclosed features from the common general knowledge that have not been described.
Examiners should take the following approach, set out in CSR Building Products Limited v United States Gypsum Company (2015) APO 72 to assess compliance with s40(2)(a):
- Construe the claims to determine the scope of invention as claimed;
- Construe the description to determine what it discloses to the person skilled in the art; and
- Decide whether the specification provides an enabling disclosure of all the things that fall within the scope of the claims.
This approach was further expanded in Evolva SA  APO 57, where the third part was taken to comprise two enquiries:
- Is it plausible that the invention can be worked across the full scope of the claim; and
- Can the invention be performed across the full scope of the claim without undue burden?
Further information on each aspect of this approach is provided below under each subheading.
Both s40(2)(a) and s40(3) require the specification to provide an enabling disclosure of the claimed invention. Under s40(2)(a), the clear enough and complete enough (enabling) disclosure must be found in the complete specification. In contrast, for s.40(3), the enabling disclosure supporting the claims must be found in the body of the specification (the description and any drawings, graphics and photographs and sequence listing).
The enabling disclosure for s40 is not the same as the enabling disclosure required in a novelty citation. For novelty purposes, the person skilled in the art has no knowledge of the claimed invention and consequently the enabling disclosure must provide ‘clear and unmistakable directions’ to do what is claimed. A s40 enabling disclosure is one that provides the person skilled in the art with sufficient information to achieve what is claimed without undue burden or the need for further invention.
Underpinning the s40(2)(a) consideration (sufficiency consideration) is the premise that the person skilled in the art who has read the specification knows what is claimed, what is to be achieved, and is approaching the task with the aim of making the invention work. The requirement under subsection 40(2)(a) is not absolute. The specification need only be clear enough and complete enough for the skilled person to work the invention, and a reasonable degree of trial and error is permissible. If the skilled person is faced with alternatives, it is generally assumed that they would choose one that will work.
Choice of components and starting materials
Where a specific component from a broad class or group is necessary to perform the invention as claimed, the specification must identify that specific component. If the specification merely refers to the broad class or group, the disclosure is not enabling.
Unless the starting materials in a process, or the ingredients in a composition, are part of the common general knowledge, the specification must disclose a method of preparing those starting materials or ingredients from known materials.
A statement in the specification that the starting material/ingredient is obtainable, or otherwise known, should generally be accepted. Reference to a material/ingredient by a trade name or another commercial identification may be considered on its face an indication that the material/ingredient is known (see also 188.8.131.52 Clear enough and complete enough disclosure (Trade marks in specifications)).
If the successful performance of an invention is purely dependent on chance or is unrepeatable, there is a fundamental insufficiency in the description of the invention and it cannot be considered enabled.
A different scenario is where repeated success of an invention is assured but this is accompanied by a proportion of failures. For example, this can happen in the manufacture of small magnetic cores or electronic components. Provided the successes can be readily separated from the failures by a non-destructive testing procedure, the disclosure of the invention will be sufficiently enabling.
Principle of general application
A principle of general application relates to a claim, or an element of the claim, stated in general terms; the question is whether the specification enables the broader “principle” or whether there is only enablement of a narrower range of integers. In such cases the claim will be enabled if a skilled person can reasonably expect the invention to work with anything that falls within the general term (Kirin-Amgen Inc v Hoescht Marion Roussel Ltd (2005) RPC 9).
Although most sufficiency objections are likely to arise because of the breadth of a claim, and whether the claim (or an integer in a claim) can be considered a principle of general application, it is important to understand that claims are not objectionable merely because they are broad.
In a simple example, a reference in a claim to ‘connecting means’ will be enabled if the claimed invention can be reasonably expected to work with any means of connection; the applicant does not need to have experimented with all of them. Similarly, in the chemical arts the scope of the general terms ‘leaving group’ or ‘protecting group’ is well understood and an example of one member of the group would normally provide an enabling disclosure for a claim referring to all members.
Where the claims are more broadly drafted, they may be considered enabled if, prima facie:
- the disclosure teaches a principle that the person skilled in the art would need to follow to achieve each embodiment falling within a claim; and
- the specification discloses at least one application of the principle and provides sufficient information for the person skilled in the art to perform alternative applications of the principle in a way that, while not explicitly disclosed, would nevertheless be obvious to the person skilled in the art (T 484/92).
When considering whether it is plausible that the invention can be worked across the full scope of the claim, the examiner considers whether there is a technically sound or credible basis for the principle of general application. An examiner will generally base an objection, and any corresponding rebuttal, on substantiated technical reasoning or on prior art.
If it is not plausible that the invention can be worked over the full scope of the claim, the disclosure is not sufficient. If lack of plausibility has been established, putting the invention into practice would inevitably require an undue burden. It is not necessary to make a strong case regarding undue burden if an invention is considered implausible.
If the claimed feature is considered plausible, the question of undue burden must still be addressed.
Failure to meet either or both enquiries, that is the question of plausibility or the question of undue burden, will mean there is a lack of sufficiency.
If the person skilled in the art cannot perform the disclosed invention without prolonged research or tests that go beyond routine trial and error, it would be an ‘undue burden’. In deciding whether this is the case, examiners should consider the nature of the invention and the abilities of the skilled person, including the degree to which they may normally carry out routine trials and experimentation. Experimentation which requires inventiveness or discovery of something new to work the invention would likely indicate that the specification lacks sufficiency.
Nature of the invention
Examiners should take care with particularly complex fields of invention. Examiners need to avoid imposing too high a standard of disclosure just because the subject matter is inherently complex. Where the specification is particularly complex, performing the invention would be expected to be accompanied by a great amount of work.
For example, the development time for a new pencil sharpener is likely to be much shorter than the development time for a nuclear fusion reactor.
Where the invention involves a new principle of general application and the claimed technique has broad applicability, if the specification provides an enabling disclosure of one practical application of the principle, implementation of the principle for an alternative application may not involve an undue burden. However, this will depend on the facts of the case and be influenced by the extent to which the information in the specification could be used to develop further embodiments without a major conceptual leap. (Kirin Amgen/Erythropoietin II T 636/97 at [4.5])
Abilities of the skilled person
The degree of skill or knowledge expected of the person skilled in the art will depend on the complexity of the relevant art. The skilled person is not a person of exceptional skill or knowledge. But they must have a reasonable degree of skill and common knowledge of the art and be able to use this in conducting trials and correcting obvious errors in the specification that can readily be corrected.
No objection would arise where there are errors or omissions in the specification, but the person skilled in the art would recognise that there was an error (or information missing) in the specification and could rectify this without making further invention.
See also 184.108.40.206 The Addressee for additional guidance identifying the person of skill in the art.
See also 220.127.116.11 Legal principles on Undue Burden for additional background information.
Clarity of Disclosure
Similar to the approach in "18.104.22.168 Claims are clear and succinct", examiners are not expected to proof-read the specification to identify each and every clarity issue of the disclosure. Examiners should adopt a practical and common-sense approach, raising objections only on significant deficiencies they become aware of during the course of examination.
The disclosure of a complete specification will not be clear enough if it is so fundamentally deficient that a person skilled in the art, having read the specification, could not understand how to perform the claimed invention. In these circumstances, it is also unlikely that a reasonable search could be conducted of the invention defined in the claims.
No objection should be taken under s40(2)(a) merely because it is possible to describe an invention more clearly.
A specification should not contain superfluous or irrelevant matter. Complicated mathematical calculations and analyses are undesirable, unless they are necessary for a full understanding of the invention. However, only in the most extreme cases should the applicant be requested to shorten an inordinately long specification.
The description should not contain passages which confuse the scope of the invention. However, phrases such as “the invention should be taken to include any modifications, whether novel or not” do not provide a meaningful disclosure of any subject matter and should be construed as such.
Where parts of the description or particular drawings, graphics or photographs do not exemplify the invention claimed, e.g. where they are included as explanation of the invention, as comparative examples, or where they relate to prior art, this should be clearly indicated.
Specific scenarios and claim types
Discrete methods or products must be individually enabled
Disclosing one method of making a product with only one embodiment provides an enabling disclosure to the product per se. An applicant is not required to enable the person skilled in the art to make the same product by all possible methods (Generics (UK) Limited and others v H Lundbeck A/S (2009) UKHL 12; (2009) RPC 13 at paragraph 80).
Where the claims include a number of discrete processes or products, each must be sufficiently disclosed and enabled, (Chiron Corp and Ors v Murex Diagnostics Ltd and Ors (1996) RPC 535 at pages 612 and 613). The disclosure of a single embodiment will not always satisfy the requirement for an enabling disclosure (Biogen Inc v Medeva PLC (1997) RPC 1 at page 22).
Where the claims encompass a broad field (for example, a broad class of products), an enabling disclosure may involve several generic method(s) of production (each enabling different subgroups within the broad field), or several examples or alternative embodiments or variations, sufficient to enable the person skilled in the art to perform the invention over the whole scope of the claims, without an unreasonable amount of trial and error.
Claiming by result
The criteria for an enabling disclosure are the same regardless of the claim type and are not stricter where a claim is limited by the result to be achieved.
Where a claim defines the invention in terms of desirable results, the claim should be construed to determine its scope. Properly construed, the claim may encompass, for example, a class of products having particular properties, a class of processes that achieve a particular result, or a combination of these in a product by process claim.
Where the claim encompasses a class of products or processes, the specification will need to provide enough instruction for the skilled person to make each product and/or work all the processes that are encompassed by the claim, without undue burden or the need for further invention (see 22.214.171.124 Support for the claims for additional information).
Individual features defined by function
Where a feature of a claim is defined in functional terms, the person skilled in the art must understand it and be able to implement it (T 568/97).
A claim may broadly define a feature in terms of its function, where only one example of the feature has been explicitly disclosed, provided the person skilled in the art would appreciate that other means could be used for the same function. Where a functional feature in a claim encompasses a vast range of possible alternatives, the claim will not be enabled unless the person skilled in the art would reasonably expect the claimed invention to work with anything that falls within the scope of the functional definition.
Where the claim defines a class of functionally-defined products and the specification teaches a process for making a vast number of products that may or may not have the function as claimed, the disclosure will not be enabling for the claimed invention unless it teaches the person skilled in the art how to ascertain which of the products actually has the required properties (American Home Products Corp v Novartis Pharmaceuticals UK Ltd (2001) RPC 8 at paragraphs 39 - 43). Where a screening method is provided, a further consideration is whether the time required to screen every product would impose an undue burden on the person skilled in the art.
Where the claims define the invention in terms of parameters, the specification as filed must disclose a means to achieve and/or determine the parameter values, unless a person skilled in the art would know what method to use or all methods would yield the same result.
For example, where a claimed product comprises two components and each component is selected from separate vast lists, performing the invention requires the person skilled in the art to select a pair of components to achieve desirable characteristics in the final product. The specification would lack an enabling disclosure where:
- the specification contains little or no guidance on how to select a pair of components which would achieve the desired characteristics in the resulting product; and/or
- the specification provides no information on how the desirable characteristics could be measured or otherwise determined in a product containing any pair of components.
A consideration of whether performing the invention over the whole scope of the claims would impose an undue burden is also relevant (see also 126.96.36.199 Parametric Claims under Claim Construction).
‘Reach-through’ claims define compounds in terms of specific properties identified in a screening assay. This style of claim is more prevalent in the chemical and biochemical areas, and in many cases such claims will not be enabled.
Where the specification provides a screening method, consider whether the time required to screen every product would impose an undue burden in requiring substantial experimentation by trial and error on the person skilled in the art.
See also 188.8.131.52 Support for the claims for additional information.
Where claims are to a composition comprising a ‘synergistic’ combination of 2 or more chemical compounds, the specification will need to contain guidance on how the synergistic result is achieved. For example, the concentrations or ratios of the compounds that will provide the synergistic result may need to be disclosed. Synergism between chemical compounds is generally unpredictable. Not all combinations of the specified compounds will necessarily exhibit the claimed property.
Without this guidance there may be undue burden on the skilled person to test all possible combinations to determine those that fall within the scope of the claims.
Reliance on cross-references
A specification should provide a clear enough and complete enough disclosure of the claimed invention without reference to other documents.
If the specification relies on a cross-reference to disclose details required to perform the invention, it is not sufficiently enabling. In this scenario an amendment to insert the cross-referenced material into the specification is required before the application can be accepted. Amendments which propose to insert the relevant cross-referenced material are generally allowable under s102(1), provided the material was verifiably present in the referenced document at the filing date of the application under examination (see also 184.108.40.206 Substitute documents and 220.127.116.11 Allowability under section 102(1)).
Cross-references to other documents merely to provide background information, prior art, or to illustrate subsidiary features, are not objectionable provided that:
- the cross-referenced document(s) contained the information at the filing date of the specification; and
- where the cross-referenced document is a patent document, it was filed on or before the filing date of the specification being examined; or
- where the cross-referenced document is a non-patent document, it was publicly available on or before the filing date of the specification.
For example, a description that referred to feature X, noting that X could be in any form, but preferably in the form disclosed in a cross-reference, would not be objectionable if a claim merely referred to feature X. However, if the claim specified the particular form disclosed in the reference, the absence of the relevant disclosure would be objectionable under s40(2)(a), and an amendment would be required to insert the relevant cross-referenced material before the application could be accepted.
The content of the cross-referenced patent or non-patent document at the filing date of the specification being examined will need to be verifiable.
Incorporation by reference of matter contained in non-patent documents may be problematic, as there may be doubt as to the content of the documents at the filing date of the application under examination.
Where a cross-referenced document is not readily available to examiners, the applicant should be requested to provide a copy. The applicant should also be requested to provide a translation if the cross-referenced document is not in English. For translations filed on or before 25 September 2019, a certificate of verification for translation must also be provided.
Where a reference to an internet page is essential for sufficient disclosure of the claimed invention, a copy of a verifiably dated web page showing its contents at the filing date must be provided before an amendment can be allowed under s.102 to add such matter to the complete specification.
Note that where the content of a cross-referenced non-patent document is required in order to perform the claimed invention and there is doubt as to its disclosure at the filing date of an application, the application may lack a clear enough and complete enough disclosure and any proposed amendments may not be allowable. In these situations, where the issue has not been resolved despite adverse reports, examiners should consult Patent Oppositions.
If the specification refers to another document for the purposes of a disclaimer or to exclude subject matter from a claim, the specification can be amended to include the cross-referenced material as long as the amendment does not result in the specification disclosing or claiming new matter (s102(1)). See also Cross-references and Disclaimers under '18.104.22.168 Claims are Clear and Succinct'.
Trade marks in specifications
A trade mark is used to identify the source or origin of a good, not its properties. Where a feature of a claimed invention is characterised by way of a trade mark and the characterisation introduces uncertainty in how the invention is performed, the examiner should object that the invention has not been disclosed in a clear enough and complete enough manner. (See also Trade marks in claims under Support).
Colour drawings, graphics, and photographs
It is rare that the use of colour drawings, graphics or photographs is required to satisfy a clear enough and complete enough disclosure of an invention. The use of colour drawings, graphics or photographs is permitted in certain circumstances (see Drawings, graphics, photographs and colour under Formal Requirements of the Specification). The acceptability of such pages is generally a formality issue handled by CEG, with there being an expectation that an applicant files black and white drawings, graphics or photographs where possible. Any queries regarding the acceptability (from a reproducability perspective) of colour drawings, graphics or photographs should be referred to CEG.
Where colour is important to an invention, use of a standard colour reference chart (such as the Royal Horticultural Society Colour Chart) may be an alternative to using colour drawings, graphics, or photographs.
A complete specification does not lack a clear enough and complete enough disclosure just because a relative term has been used to describe an invention and some experimentation of a routine nature is necessary to perform the invention. However, the person skilled in the art must be able to interpret the scope of the relative term and what is encompassed by the claims.
A patent related to a diving suit with a "close fit", such that only a "minimum air layer" could form between the suit and the diver's body did not fail due to insufficiency, even though the specification made use of a relative term which did not describe how much room there should be between the diver and the suit (Poseidon Industri A.B. v Cerosa Limited (1982) FSR 209). In this case, "a little ordinary trial and error" would be sufficient to ascertain the satisfactory minimum layer of air.
See also Relative terms in 5.5.4 Claim construction.
It is possible for ‘cyclic inventions’ to occur in concurrent cases. For example, one specification describes the preparation of B from A; another describes the preparation of A from B. Neither specification discloses any other means of preparation of either A or B. Both A and B are presumed to be new compounds or new classes of compounds, since otherwise one of the inventions may not be novel.
As a general rule, it is not permissible to use one specification to assist in the interpretation of the other, even if filed by the same applicant (Pfizer Inc v Commissioner of Patents (2005) FCA 137). The fact that one specification contradicts the other is not a basis for an objection, as each application stands on its own. Instead, examiners should raise an objection of lack of clear enough and complete enough disclosure on both applications and seek clarification of the matter.
Contravention of laws of nature
If an invention contravenes the laws of nature or is absurd in view of current knowledge (for example, a perpetual motion machine), an objection may be raised due to lack of clear enough and complete enough disclosure. This is because having regard to the known laws of nature, the invention is not capable of performing in the manner described.
Other grounds of objection which examiners should consider are:
Claims as the basis of disclosure
Where the only disclosure of a relevant feature occurs in the claims, it is proper to have regard to the claims to determine whether the claimed invention complies with s40(2)(a).
However, the mention of a feature in a claim does not necessarily establish an enabling disclosure of the claimed invention for the purposes of s40(2)(a) – it is necessary to construe the complete specification as a whole to establish what the disclosure enables the person skilled in the art to do. For example, an application will not comply with s40(2)(a) where:
- a feature referred to only in a claim is inconsistent with the disclosure as a whole; or
- a feature referred to only in a claim does not provide sufficient information to enable the person skilled in the art to perform the invention over the whole width of the claim, without undue burden or the need for further invention (and the feature is not otherwise sufficiently enabled by the common general knowledge in the art).
See also related Support topic on Features disclosed only in the claims.
Objections under s40(2)(a)
Section 40 requires a “point-in-time” consideration. Compliance with s40 is determined based on the disclosure provided in the specification read in view of the common general knowledge in the art as of the filing date of the application. This means objections should not be taken based on speculation that an alternative embodiment falling within the scope of the claims may be developed later that could result in hypothetical “future infringement” of a claim.
Unless the examiner is reasonably satisfied, on the balance of probabilities, that the complete specification complies with s40(2)(a), they should raise an objection.
The objection must include logical reasons why the complete specification does not disclose the claimed invention in a manner which is clear enough and complete enough for the person skilled in the art to perform the invention over the whole width of the claims. The reasoning may be based on, for example the examiner’s personal knowledge, statements made in the specification, the prior art, or other materials on file (for example, in third party re-examination requests or documents filed under s27).
If the claims contain ambiguity that causes doubt about the scope of the invention, the examiner may make an objection under s40(2)(a) that the invention has not been enabled over the whole width of the claims. However, in extreme cases where the scope of the claims cannot be determined, it may be preferable to object to a lack of clarity in the claims. Objections under s40(2)(a) and/or s40(3) can be raised, where relevant, after the clarity objection has been resolved.
Note: Although a deficiency may lie predominantly in the clarity or the completeness of the disclosure, objections under s40(2)(a) should use the phrase ‘clear enough and complete enough disclosure’.
Considering a response to an objection under s40(2)(a)
Where the applicant provides evidence or credible and plausible submissions that adequately address the examiner’s concerns by establishing that, on the balance of probabilities, the disclosure is clear enough and complete enough, the objection should be withdrawn. A mere assertion will not be enough to overcome a well-reasoned objection under s40(2)(a).
Objections under s40(2)(a) cannot be overcome by the addition of new matter extending beyond that disclosed by the specification as filed (together with other prescribed documents), since this is prohibited under s102(1). However, an objection to an excessive breadth of the claims may be remedied by restricting the scope of the claims.
Where an issue is not resolved despite subsequent adverse reports, the supervising examiner should consult Patent Oppositions on the further progress of the case, including whether to set the matter for hearing with the intent to refuse the application.
Clear enough and complete enough
The test for a clear enough and complete enough disclosure was provided in Kirin-Amgen Inc v Hoechst Marion Roussel (2004) UKHL 46; (2005) RPC 9 at paragraph 103:
"Whether the specification is sufficient or not is highly sensitive to the nature of the invention. The first step is to identify the invention and decide what it claims to enable the skilled person to do. Then one can ask whether the specification enables them to do it."
For the purposes of s.40(2)(a) ‘the invention’ is the claimed invention:
"In order to decide whether the specification is sufficient, it is … first necessary to decide what the invention is. That must be found by reading and construing the claims, in which the inventor identifies what he claims to be his invention." (Lord Hoffmann in H. Lundbeck A/S v Generics (UK) Ltd (2008) EWCA Civ 311; (2008) RPC 19 at paragraph 29).
Where a claim is to a product per se, the product is the invention. Where a claim is to a process, the invention is working the process (H. Lundbeck  at paragraphs 27 and 30).
In general, for a ‘product by process’ claim where the product is known, the invention is the process by which the product is made or otherwise obtained (Kirin-Amgen  at paragraph 109).
Biogen v Medeva (1997) RPC 1 at 48 explained the concept of an enabling disclosure:
"the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the [specification] discloses a principle capable of general application, the claims may be in correspondingly general terms. The [applicant] need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the [applicant] must enable the invention to be performed in respect of each of them."
Where there are different embodiments, each must be sufficiently disclosed and enabled (Chiron Corp and Ors v Murex Diagnostics Ltd and Ors (1996) RPC 535 at pages 612 and 613). In this situation, the disclosure of a single embodiment will not always satisfy the requirement for an enabling disclosure (Biogen Inc v Medeva PLC (1997) RPC 1 at page 22).
Where the claim defines a class of functionally defined products and the specification teaches a process for making a vast number of products that may or may not have the function as claimed, the disclosure will not be enabling for the claimed invention, unless it teaches the person skilled in the art how to ascertain which of the products actually has the required properties (American Home Products Corp v Novartis Pharmaceuticals UK Ltd (2001) RPC 8 at paragraphs 39 – 43).
If a feature in a claim has a limiting effect but the specification does not teach how the feature is to be achieved, or how the presence or absence of the feature can be determined, and this information does not form part of the common general knowledge in the art, the specification does not provide an enabling disclosure of the invention claimed (Minnesota Mining & Manufacturing Co’s (Suspension Aerosol Formulation) Patent  RPC 135).
Jump back to Examination practice - Undue burden
The disclosure of an invention is not incomplete merely because a reasonable degree of difficulty is experienced in its performance. In seeking to perform the invention, the person skilled in the art may carry out ‘routine trials’ and ‘normal routine matters that they would seek to do and be able to do’ (that is, ordinary methods of trial and error which involve no inventive step). These are generally necessary in applying the teachings of a specification to produce a practical result. However, it would be an undue burden if the person skilled in the art had to undertake prolonged research, enquiry or experiment, or take an inventive step in order to carry out the invention as claimed (Eli Lilly & Co. v Human Genome Sciences, Inc. (2008) EWHC 1903 (Pat); (2008) RPC 29 at paragraph 241).
Considering undue burden
In considering undue burden, examiners should have regard to the nature of the invention and the abilities of the skilled person. They can then ask whether the specification requires the skilled person to carry out tests or developments that go beyond the routine (Eli Lilly & Co. v Human Genome Sciences, Inc. (2008) EWHC 1903 (Pat); (2008) RPC 29 at paragraph 241 and Halliburton Energy Services Inc. v Smith International (North Sea) Ltd (2006) RPC 2).
Where the invention involves a new principle of general application and the claimed technique has broad applicability, if the specification provides an enabling disclosure of one practical application of the principle, implementation of the principle for an alternative application may not involve an undue burden. However, this will depend on the facts of the case and be influenced by the extent to which the information in the specification could be used to develop further embodiments without a major conceptual leap (Kirin Amgen/Erythropoietin II T 636/97 at section 4.5).
The degree of skill or knowledge to be expected of the person skilled in the relevant art will naturally depend on the complexity of the art in question. Where the art is especially complicated and difficult, it is inappropriate to consider the skilled person to be a worker on the shop floor. Nevertheless, this hypothetical addressee is not a person of exceptional skill and knowledge and is not expected to exercise any invention or conduct any prolonged research, inquiry or experiment. They must, however, be prepared to display a reasonable degree of skill and common knowledge of the art in making trials and to correct obvious errors in the specification if a means of correcting them can readily be found (Valensi & Another v British Radio Corporation (1973) RPC 337).
See also Catnic Components Limited v Hill & Smith Limited (1982) RPC 183.
Errors or omissions
If there are actual errors or omissions in the specification, the specification will not provide a clear enough and complete enough disclosure unless the person skilled in the art would recognise that there was an error or omission and could rectify this without further invention (Eli Lilly and Co v Human Genome Sciences, Inc. (2008) RPC 29 at page 241 referring to Valensi v British Radio Corporation (1973) RPC 337).
As a general rule, one specification cannot be used to assist in the interpretation of another, even if both are filed by the same applicant (Pfizer Inc v Commissioner of Patents (2005) FCA 137). The fact that one specification contradicts the other is not a basis for an objection, as each application stands on its own. Instead, examiners should raise an objection of lack of clear enough and complete enough disclosure in relation to both applications and seek clarification from the applicant(s).
Claims as the basis of disclosure
When assessing compliance with s.40(2)(a), the specification must be read as a whole. Therefore, the claims in the specification can be used to dispel ambiguity or uncertainty concerning the description of the invention. This principle was provided in the context of full description in Kimberly-Clark v Arico (2001) 207 CLR 1 at pages 12 and 13. However, it would also apply to the assessment of clear enough and complete enough disclosure (see also Pfizer Overseas Pharmaceuticals v Eli Lilly and Company (2005) FCAFC 224 at paragraph 325).
|Amended Reason||Date Amended|
Published for testing