Welcome to the new version of the Patents Manual. Please note there are changes to the numbering and sequence of the chapters and pages in the manual. You are encouraged to take the time to explore and familiarise yourself with this new structure.

5.6.7.5 Best method

Date Published

Key Legislation:

Patents Act: 

  • s18(1)(c) Invention is useful
  • s40(2) Disclose the invention in a manner which is clear enough and complete enough
  • s102 What amendments are not allowable?

Patent Cooperation Treaty (PCT):

Overview

Section 40(2)(aa) states that the complete specification must disclose the best method known to the applicant of performing the invention.

This, along with the requirement for clear enough and complete enough disclosure, ensures that, in exchange for exclusive rights, the patentee will share with the public the information necessary to make and use the invention.

Examination practice

The requirement of disclosing the best method is closely related to s40(2)(aa), clear enough and complete enough disclosure. There is no requirement to provide a ‘best method of performance’ that differs in any way from that which is otherwise provided when disclosing the invention in a clear enough and complete enough manner.

Note that the specification does not need to use the words ‘the best method known to the applicant of performing the invention is ...’.

However, if a specification does not describe any method (explicitly or implicitly) of putting an invention into effect, the examiner should object that the complete specification does not provide the best method known to the applicant of performing the claimed invention.​​​​​​​

What the best method really is

The question of whether the applicant has provided the best method of performing the invention is necessarily one of fact and evidence, with the knowledge of relevant facts inherently lying with the applicant. Evidence for whether the applicant has actually provided the best method of performing the invention is generally not available during examination. Therefore, any method the applicant has provided is considered ‘the best method’. Objections relating to whether it really is the best method are likely to arise during opposition proceedings rather than during examination.

Number and specificity of methods

The applicant only has to describe one method of performing the invention. If they do describe more than one method, they do not need to identify the 'better' or 'best' method.

Furthermore, the description of the method does not need to refer to a specific example (preferred embodiment) of the invention. If there are adequate instructions for the skilled person to put the claimed invention into effect, the best method requirement will generally be met. Note, however, that this is not automatic (Les Laboratoires Servier supra).

Self-evident method

It is not enough for the applicant to assert that the method is common general knowledge and/or self-evident. The applicant must disclose the best method known to them.

Knowledge at the time of filing

The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification. If the applicant later identifies a better method, they do not need to amend the specification. In fact, this type of amendment may not be allowable under s102(1) if it would add new matter.​​​​​​​

Legal principles

Number and specificity of methods

There is no obligation for the applicant to describe the method for more than a single preferred embodiment (Ethyl Corporation v California Research Corp (1970) AOJP 562).

The ‘best method of performance’ does not need to relate to a specific example of the invention. Where there are sufficient instructions for the skilled worker to put the claimed invention into effect, the best method requirement will generally be met. Note, however, that this is not automatic (Les Laboratoires Servier v Apotex Pty Ltd (2016) FCAFC 27).​​​​​​​

Self-evident method

In American Cyanamid Company v Ethicon Limited (1979) RPC 215 at 269, the court stated:

"The Act is intending to protect the public against a patentee who deliberately keeps to himself something novel and not previously published which he knows of or has found out gives the best results, with a view to getting the benefit of a monopoly without giving to the public the corresponding consideration of knowledge of the best method of performing the invention."

Therefore, even if a manner of performing an invention is self-evident, applicants are still required to set out the best method of performing the invention known to them. This requirement was confirmed by the Full Court of the Federal Court (Les Laboratoires Servier v Apotex Pty Ltd (2016) FCAFC 27).

In Samuel Taylor v S.A. Brush Co. (1950–51) 83 CLR 617, the specification was objectionable as the description of the device did not:

"provide, expressly or impliedly, to a skilled workman any information as to the method of carrying out the invention."

Knowledge at the time of filing

The best method requirement is assessed on the basis of the applicant’s knowledge at the time of filing the complete specification (Rescare Ltd v Anaesthetic Supplies Pty Ltd, 25 IPR 119).

Amended Reasons

Amended Reason Date Amended

Page updated to correct a typographical error

Published for testing
Back to top