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.

Invention: The ‘invention’ is ‘the embodiment which is described, and around which the claims are drawn’, as distinct from ‘the subject-matter of a claim - especially that of the broadest claim’, or ‘the inventive step taken by the inventor’.

AMP v Utilux (1971) 45 ALJR 123, affirmed in Kimberly-Clark v Arico (2001) 207 CLR 1 at 21.

Consistory statement: As a general rule, a well drafted specification will contain fairly clear statements of the invention that are supported by the description, without contradictory statements. In such situations, the asserted statements of the invention may usually be taken at face value. However, while a consistory statement may be a strong indication of what the invention is, it is not definitive. Consideration must be given to the specification as a whole.

'Essential’ feature: A statement that a feature is ‘essential’ is usually indicative that the feature is part of the invention. However, consideration must be given to other parts of the specification, which may indicate that the feature is not actually essential. (Note that the concept of ‘essential features’ is irrelevant to the question of compliance with s40. Essential features are only relevant to questions of anticipation and infringement; see 2.11.2.4.5 "Essential Features" of the Invention).

‘Preferred’ feature: While a statement that a feature is ‘preferred’ is usually indicative that the feature is not part of the broadest form of the invention, proper construction of the specification as a whole may determine that it is in fact part of the invention.

Claimed integers: When construing the specification to identify ‘the invention’, it is necessary to have regard to what is claimed. However, the mere fact that a set of integers is specified in a claim does not make that set of integers ‘the invention’. Regard must be had to the context in which those integers are described in the specification as a whole, and in particular whether the presence or absence of other integers is required, or whether the integers must be in a particular form or relationship.

Effect of amendments: At the commencement of examination, the invention may not have been properly identified. Therefore, the ‘invention’ that is the subject of the claims may change over the course of examination as a result of amendment. Consequently, examiners may need to completely re-evaluate what is the invention at subsequent report stages.

Different forms of invention: Specifications will usually disclose many ‘forms’ of an invention and occasionally will disclose several inventions. When assessing the requirements for full description (and fair basis), considerations should relate to the invention that is indicated by the claims in question. For example, if a claim is directed to an object having certain features, it is necessary to construe the specification (having regard to both the description and claims) to identify the invention in so far as it relates to that object. The questions of whether the specification fully describes that invention, and whether the claims are fairly based on the description, can then be answered.

Essence of the invention: Some decisions refer to the ‘essence of the invention’. When construing a specification, the core elements of the invention (i.e. the essence of the invention) will usually be quite evident. Identification of these core elements will usually assist in identifying the invention. However, as stated by the Full Court in Fresenius Medical Care Australia v Gambro [2005] FCAFC 220:

“While it may be of assistance to identify the essence of the invention, s18(1) of the Act makes it clear that it is the invention, so far as claimed in the claims, that is to be assessed for novelty and inventive step.”

Case Law

In Coopers Animal Health v Western Stock 11 IPR 20, the issue was whether a petty patent was fairly based on a provisional specification. A key component of a claim in the petty (a carrier called DGBE) was disclosed in the provisional specification. However, Fox J noted that:

"the two inventions described or claimed were directed at different objects, one dealing with the method, in which precise ingredients were not perhaps so essential, and the other dealing with the ingredients";

and concluded that the invention of the petty patent was a new (that is, different) invention. Spender J, in concurring, stated that:

"I share his conclusion that the integer respecting the carrier DGBE was not disclosed as part of the invention described in the provisional specification" [emphasis added].

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023