Assessment of the invention may require critical analysis. As noted in the High Court in Lockwood v Doric [2004] HCA 58, the invention is not simply:

“an assertion by the inventor in a consistory clause of that of which the invention consists”; and

“The consistory clause is to be considered by the court with the rest of the specification.”

In paragraph 100 of Lockwood v Doric, the High Court described how a specification should be written (and therefore apparently construed) by referring to a passage from the Australian patent law text Lahore, Patents, Trade Marks and Related Rights (2001), vol 1 at §15,345:

"Claims found to be inconsistent with the general description of the invention may be invalid as being not fairly based on the matter described in the specification. In order to avoid this possibility a well drawn specification will usually include in the body of the specification one or more formal 'consistory statements' setting forth what the patentee considers to be the scope of the invention, such statements often quoting the exact wording of the broadest claims in the specifications. ... Such statements will generally follow an introductory portion of the specification, which may describe the technical field of the invention and the problems with the prior art which are to be addressed by the invention. It is important that the introductory part of the specification be worded so as to be consistent with the scope of the invention as defined in the claims and any formal consistory statements.

A statement implying that the invention has a limited field of application or requires as an essential feature something which is not required by the claims may result in a finding that the claims are wider than the invention disclosed in the specification, and are accordingly invalid for lack of fair basis on the matter described in the specification."

It appears from this passage that the High Court has found that concessions of the prior art in the specification, problems intended to be addressed by the invention, limitations of the field of invention and clear statements of essential features can all be considered in “truly” construing the invention described along with the common general knowledge (but only in matters of construction – see paragraph 48 of Lockwood v Doric [supra]).

Examination Practice

Examiners should be aware that construing a specification can be subjective. Some court decisions are only majority judgements, suggesting that it is possible to construe different inventions from the one specification. This problem was discussed in the article “Does the fair basing “problem child” escape Lockwood” (2005) 16 AIPJ 210, which concluded (at page 226):

"It must be said that the lower court decisions are somewhat of an indictment of a test which, like Aladdin’s lamp, can magically accommodate almost any approach to construction and hence almost any conclusion the decision-maker desires”.

Examiners should therefore seek advice from a supervising examiner where there are conflicting views with an applicant about what the specification describes as the invention.

Amended Reasons

Amended Reason	Date Amended
	18 Oct 2023