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. Sub-Tests for Fair Basis

Date Published

Key Legislation:

Patents Act:

  • s18 Patentable Inventions
  • s40 Specifications

Related Chapters: 

  • General Principles
  • What is the Invention?

The two sub-tests relevant to the consideration of fair basis are:

  1. Is there “a real and reasonably clear disclosure” of the invention in the specification?
    Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents (1958) 100 CLR 5 and cited with approval in Rehm Pty Ltd v Websters Security Systems (International) Pty Ltd 11 IPR 289
  2. Do the claims travel beyond the subject matter of the invention described in the specification?
    Olin v Super Cartridge (1977) 180 CLR 236

Both sub-tests require that there be consistency between the invention described and that claimed, restating the primary test for fair basis outlined in General Principles.

All three tests preclude examiners from introducing elements of full support, enablement or speculative (“covetous”) claiming into a fair basis objection.  As discussed in What is the Invention?, the word “invention” referred to in the context of sec 40 (and referred to in both sub-tests) is the described invention and not the inventive step or the technical advance made by the inventor.  

Similarly, the word “real” in “real and reasonably clear disclosure” does not mean that the specification has to provide “real” (enabling) support over the scope of the claims but merely, as noted in Société Des Usines Chimiques Rhône-Poulenc v Commissioner of Patents [supra]:

‘...that the alleged invention as claimed is broadly, that is to say in a general sense, described in the body of the specification’.

Likewise, the words “travelling beyond the subject matter” do not mean that the claims cannot go beyond the technical contribution made by the inventor, nor is it proper to limit the claims based on the disclosures of preferred embodiments (see Lockwood v Doric at paragraphs 69 and 77, Photocure v Queen’s University at paragraph 134).  

Such an approach relates to the technical merit of the invention, which is irrelevant for the purposes of fair basis.  The statutory use of the word “fair” (in fair basis) refers to consistency between the claims and description, rather than the notion of a “fair reward” for the contribution made by the inventor (McBratney (2005) 16 AIPJ 210 (at page 224)).

Amended Reasons

Amended Reason Date Amended
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