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8.7.2 What is the Invention?

Date Published

Key Legislation:

Patents Act:

  • s32 Disputes between applicants etc.
  • s40 Specifications

To assess the requirements of ‘describe the invention fully’ and fair basis, it is necessary to firstly construe the specification to identify what is the invention.

In Kimberly-Clark Australian Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1, the High Court (at paragraph 21) discussed the various ways the term “invention” is used in patent law.  The High Court noted that there were four possible meanings of the word “invention”:

"They are: 1. The embodiment which is described, and around which the claims are drawn. This is the sense used in the Act: cf. the phrase of s32, 'the invention so far as claimed in any claim.  2. The subject-matter of a claim - especially that of the broadest claim. 3. The inventive step taken by the inventor. 4. The advance in the art made by the inventor; as (to take Lord Justice Moulton's example) 'he applied electricity for the first time to such-and-such a purpose.' This is likely to be broader and more fundamental than would correspond with any claim."

The High Court indicated it was the first meaning that is used for the purposes of s40(2) (full description).  This meaning also flows through to fair basis (s40(3)), which requires consistency between the described and claimed invention.

Note: The term “embodiment” for the purposes of defining the “invention” is the broadest form of the invention described, rather than the specific examples (which are preferred embodiments).   Fair basis requires a comparison of the claims with matter described in the specification, not just with a preferred embodiment.

Examination Practice

In construing the specification for the purposes of s40, examiners should ascertain what the specification describes as the invention, rather than try to identify the “real” invention, the “actual inventive step” made by the inventor, or the technical contribution made by the inventor to the art.

The High Court in Lockwood v Doric [2004] HCA 58 referred with approval to Barwick J’s comments in Olin Corp v Supercartridge Co. Pty Ltd & Or (1977) 180 CLR 236 (at page 240):

“The question whether the claim is fairly based is not to be resolved in my opinion, by considering whether a monopoly in the product would be an undue reward for the disclosure.  Rather the question is a narrow one, namely whether the claim to the product being new, useful, and inventive, that is to say, the claim as expressed, travels beyond the matter disclosed in the specification”.

When considering the examples of the invention, it must be kept in mind that these can be used to demonstrate failed attempts to arrive at the invention (which are not part of the invention), as well as the full range of an invention (including less than perfect examples that are still within the scope of the invention).  It is necessary to see what work the examples do in the patent specification in any particular case (Nufarm Ltd v Jurox Pty Ltd [2008] FCAFC 180).

Amended Reasons

Amended Reason Date Amended
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