8.7.3.4 Enabling Disclosures

Also in this Chapter:

• 8.7.3.1 Date for Determining Full Description

• 8.7.3.2 Can the Nature of the Invention be Ascertained?

• 8.7.3.3 Compliance with Subsection 40(2) is a Question of Fact​​​​​​​

• 8.7.3.5 Effort Required to Perform the Invention

• 8.7.3.6 Different Aspects Claimed in Different Claims

• 8.7.3.7 Inclusion of References

• 8.7.3.8 Trade Marks in Specifications

• 8.7.3.9 Colour Drawings and Photographs

Key Legislation:

Patents Act:

• s40 Specifications  

The test for full description was expressed in Kimberly-Clark v Arico (2001) 207 CLR 1 (paragraph 25) as:

"… will the disclosure enable the addressee of the specification to produce something within each claim without new inventions or additions or prolonged study of matters presenting initial difficulty?"

Under this test, each claim is separately considered for the purposes of full description, however there is no requirement under Australian law that a claim has to be enabled over its full scope, nor for every possible application of the invention to work or to have been demonstrated to work (see Photocure v Queen’s University 64 IPR 314 at paragraphs 107 and 149, Bristol- Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316 at paragraph 77).

For the purposes of s40(2)(a), it is not necessary for the inventor to disclose all the alternative means.  Provided there is disclosure in the sense of enabling the addressee of the specification to produce something within each claim without new inventions, or additions or prolonged study of matters presenting additional difficulty, the requirements will be met (Lockwood v Doric [2004] HCA 58 at paragraph 60). Examiners should consider the specification for the purposes of full description in the light of the common general knowledge in the relevant art at the relevant time, i.e. the date of filing.

Where a claim is extremely broad, but the specification has still enabled one specific embodiment, examiners cannot object to the claim under full description.  Note, however, that each claim has to be considered for full description and while the broadest claims may be fully described, narrower claims which fall within the scope of the broadest claims, but which do not encompass the preferred embodiments, could still lack full description.

In a linear chain of dependent claims, the description will be sufficient for all claims in the chain if it is sufficient for the last claim in the chain. However, in the more general situation where the chain of dependency is branched into different sub-sets of claims, the specification will need to provide an enabling description for each of the alternative branches of dependent claims.