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. Can the Nature of the Invention be Ascertained?

Date Published

In Welch Perrin and Co. Pty. Ltd. v Worrel (1961-1962) 106 CLR 588 the High Court held that the requirement for a full description is satisfied if it is possible to ascertain the nature of the invention from a reading of the specification as a whole, including the claims.

An objection that the specification does not fully describe the invention, because the nature of the invention cannot be ascertained, should only be taken if the specification is drafted in such a way that it is not possible to gain any idea of what the invention actually is. In practice, this situation is unlikely to occur in professionally drafted specifications as:

a. the nature of the invention is usually stated in the so-called "consistory clause".

b. the absence of a consistory clause does not, in itself, lead to an objection of lack of full description. There is no statutory requirement for a consistory clause and the High Court has held that its purpose may be met by the claims themselves.

c. where some claims are in conflict with the specification, the specification can be considered to have fully described the invention, provided it is possible to ascertain the nature of the invention having regard to the specification as a whole.

d. where some embodiments described are in conflict with the claims, an objection of lack of full description does not arise, provided it is possible to ascertain the nature of the invention from the specification as a whole (Vaw Aluminium AG v Alcan Deutschland GmbH [1994] APO 68). In such cases, an objection that the specification does not describe the best method of performance may be appropriate (see also At Least One Method must be Disclosed).

e. it is not necessary to describe an invention as narrowly as it is claimed, provided ambiguity does not thereby result (Imperial Chemical Industries of Australia and New Zealand Ltd. v Brock (1965) AOJP 998, at page 1000).

f. conversely, there is no need to describe the embodiment of the invention as broadly as the invention may be claimed. The fact that the claims and the description are not necessarily required to be of the same ambit is particularly pertinent where prior art is cited and where, as a result, the scope of the claims is narrowed without corresponding changes in the body of the specification.

Other Considerations

New Combination

Many inventions lie in an improvement of an existing device, combination or process. Where the invention lies in a new combination, irrespective of whether the integers are all old or some are old and some are new, the requirements of s40(2)(a) are satisfied by a description of the combination as such.  The applicant is not required to distinguish what is old from what is new (Lockwood v Doric [2005] FCAFC at paragraph 195).

Inventive Step

There is no requirement for a specification to identify the inventive step.  The courts have consistently held that an applicant for a grant is not, pursuant to the statutory requirements to describe the invention, under an obligation to identify the inventive step involved.  Courts have declined to order that a patentee give particulars of what is alleged to be the inventive step, on the basis that the patentee could do no more than give an opinion as to this (Arrow Pharmaceuticals Ltd v Merck & Co Inc (2003) 58 IPR 231).

Amended Reasons

Amended Reason Date Amended
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