Australia patent examination manual

A claim may encompass products or processes which involve the use of technology unknown at the time the claim was drafted Kirin-Amgen Inc v Hoeschst Marion Rousel Ltd [] RPC 9 at [80]. Such a claim may subsequently be found to lack support if it encompasses a later product or process that the specification does not enable and which makes no use of the invention it discloses.

Examiners may not be aware of such developments during the course of examination, however this type of information may be introduced with third party submissions or a re-examination request.

However, where an improvement is subsequently made to a claimed method which involves an inventive step, although the use of the improvement would still provide a means of working the original invention, the specification does not become insufficient merely because it does not enable the person skilled in the art to make the inventive improvement.

For example, if a further invention involving selection of a particular integer falling within a broad term in a claim improves the way the invention works, the original specification is not required to enable the selection. Kirin-Amgen at []-[], []. International 1. Non-Patent Literature 1. National 2. Perpetual Motion Machines 2.

Oppositions, Disputes and Extensions 3. Date Published 20 Jan Note: The information in this part only applies to: standard patent applications with an examination request filed on or after 15 April Overview Subsection 40 3 requires that the claim s must be supported by matter disclosed in the specification. Consideration of Support The proper construction of the specification and claims is fundamental to the consideration of whether the claimed invention is supported by the matter disclosed in the specification see 2.

In order to determine whether the specification complies with sec 40 3 , examiners should: construe the claims see 2. The principles for examining these criteria are discussed further below. Enabling Disclosure Under sec 40 3 , the matter in a claim of a specification must be supported by an enabling disclosure in the description and any drawings, graphics, photographs and sequence listing i. Scope of the Claims Must Not be Broader Than is Justified by the Contribution to the Art A contribution to the art will broadly be a product or process that is disclosed in the specification, which is novel and inventive or innovative and enabled by that disclosure for further information see 2.

Clarifying the Commissioner's practice while the appeal of Ono Pharmaceuticals v Commissioner is proceeding. Clarifying the Commissioner's practice while the appeal of Ono Pharmaceutical v Commissioner is proceeding.

Updated to address IL relating to claimed invention with high likelihood of patentability issues arising in national prosecution for Art. International 1.

Non-Patent Literature 1. National 2. Perpetual Motion Machines 2. Manual of Patent Practice and Procedure. How to apply for a patent. Examination Guidelines Hebrew only. Rules on filing, examination of patent applications and grant of patents Lithuanian only.

Patent Examination Manual. Retningslinjer for saksbehandlere Guidelines for Search and Examination — Norwegian only. Patent Procedure and Examination Guidelines. How to patent an invention or protect a utility model Polish only Guidance inventor.

Methods of examination of the patentability of inventions and utility models Polish only. Manual for interpretation of the Industrial Property Code Portuguese only.