8.7.3.6 Different Aspects Claimed in Different Claims

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

• 8.7.3.4 Enabling Disclosures

• 8.7.3.5 Effort Required to Perform the Invention​​​​​​​

• 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  

Where there are several aspects to the invention that are claimed in different claims, it is necessary to fully describe each aspect, such that each claim is supported by an enabling disclosure. However, where one aspect is analogous to another aspect which has been fully described, less detail will be required. Similarly, if it is evident from the common knowledge in the art how to work an aspect of the invention, then less detail is required.

Vidal Dyes Syndicate Ld v Levinstein Ld (1912) 29 RPC 245 at 265-6 provides an example of an invention where one aspect of the invention was not analogous to the other aspects, and there was no common knowledge in relation to that aspect. The Court disregarded the description of the other aspects in assessing whether the particular aspect was fully described. Consequently, the specification was not fully described in so far as it claimed the particular aspect. However, examiners should be careful in applying this approach. The fact that the aspect was not analogous was established by the evidence of experts and was not apparent from the specification.