IPA patent 5.6.7.7-claims-define-the-invention — IP Australia Patent Manual of Practice and Procedure – 5.6.7.7 Claims define the Invention

Also in this Chapter: 5.6.7.1 Claims are Clear and Succinct 5.6.7.2 Clear and Complete Disclosure s40(2)(a) 5.6.7.3 Support for the Claims s40(3) 5.6.7.4 Difference Between ‘Clear and Complete Disclosure’ and ‘Support’ 5.6.7.5 Best Method 5.6.7.6 Complete Disclosure Micro-Organisms and Other Life Forms (Budapest Treaty, Deposit Requirements) ​​​​​​​ 5.6.7.8 Annex A - Examples: Subsections 40(2)(a) and 40(3) 5.6.7.9 Annexures Key Legislation Patent Act: s40 Specifications A complete specification must end with a claim or claims "defining the invention" (s40(2)(b) where it relates to an application for a standard patent and s.40(2)(c) where it relates to an application an innovation patent). This requires that the claims define the monopoly for which application has been made. Thus, in AMP v Utilux (1971) 45 ALJR 123 at page 128, McTiernan J stated: "The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect." Further, the full bench of the High Court indicated on appeal ( Utilux v AMP (1974) 48 ALJR 17 ) that: "... the definition of any invention must be found in the claims read with the specification as a whole." The dictionary to the Act defines ‘invention’ as including an ‘alleged invention’. Accordingly, the novelty, or inventiveness of the matter defined by a claim is not a relevant consideration. Rather, it is whether the claim fulfils the statutory purpose of ‘defining the invention’, including an alleged invention. Similarly, where there is an inconsistency between the invention claimed and the invention described, the objection is not that the claim does not define the invention. In this situation, examiners should consider whether the claimed invention is supported by matter disclosed (see 5.6.7.3 Support for the claims -Inconsistency Between the Invention Disclosed and the Invention Claimed). The objection of failing to define the invention will typically arise in the following ways: Claims of the form ‘My invention is worth $1 million dollars’, or ‘My invention works better than X’s invention’. Such claims are most commonly found in private applicant cases; and/or Claims that bear no relationship to anything described in the specification.