8.7.2.3 Consistory Clause

Also in this Chapter:

• 8.7.2.1 General Considerations

• 8.7.2.2 Approach in Lockwood v Doric​​​​​​​

• 8.7.2.4 Requirement for Critical Analysis

• 8.7.2.5 ＂Essential Features＂ of the Invention

Key Legislation:

Patents Act:

• s40 Specifications

As a general rule, a well drafted specification will contain fairly clear statements of the invention which 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, particularly where the specification as a whole indicates that the actual invention is narrower than the consistory statement suggests.

Case Law

Lockwood v Doric [2004] HCA 58

(paragraph 87)

The High Court noted that the mere "coincidence of language" does not in itself establish fair basing.  A claim based on what has been stated in the form of a consistory clause is not fairly based if other parts of the specification indicate that the invention is narrower than the consistory clause.  Therefore, it is necessary to consider what the body of the specification read as a whole discloses as the invention.  As further noted:

‘attention (must be given) to the construction of the specification as a whole, putting aside particular parts which, although in isolation they might appear to point against the "real" disclosure, are in truth only loose or stray remarks.’

Pfizer Overseas Pharmaceuticals v Eli Lilly and Company [2005] FCAFC 224

(paragraphs 268-277 and 325-347)

The Federal Court found that a broad consistory clause alone was not sufficient to establish fair basis. On a proper reading of the specification, the Court found that the invention lay in the use of specified compounds of the invention.  However, one of the claims defined compounds outside this range.  The Court concluded that this claim “travels well beyond the range of compounds, large as it may be, which is disclosed in the body of the specification” and hence lacked fair basis.  

Atlantis Corporation Pty Ltd v Schindler (1997) 39 IPR 29

A statement in the specification describing the invention in language similar to the first claim was not treated as a description of the invention.  While the claims (and consistory statement) defined an apparatus without any limitation as to its use, the specification, read as a whole, described an apparatus limited to a particular use as a sub-soil drainage system.  The Full Court held that the consistory statement:

"should not be allowed to disguise the fact that the invention disclosed in the body of the specification is truly 'a sub-soil drainage method based on a particular apparatus' or 'a particular apparatus in its application to sub-soil drainage'.  The claims, however, are 'pure apparatus claims'.  They are not subject to any limitation as to use.  They travel beyond, and are not fairly based on, the matter described in the specification”.