IPA patent 8.7.3.5-effort-required-to-perform-the-invention — IP Australia Patent Manual of Practice and Procedure – 8.7.3.5 Effort Required to Perform the Invention

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 ​​​​​​​ 8.7.3.6 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 As expressed in Kimberly-Clark v Arico (2001) 207 CLR 1 , the test for full description is: "… 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?” Therefore, if a person skilled in the art would require a significant period of time and effort to perform the invention as defined in any of the claims, the specification may not meet the requirements for full description. For example, in Sabre v Amadeus Global Travel [2004] APO 21 , the issue was whether an invention involving a computer system was fully described in the face of an allegation that it would “take months if not years of design, development and implementation work involving creativity and ingenuity in the analysis and design of the system.” Applying the Test The test for full description should be applied to each claim and it may be possible for the disclosure to produce something within the scope of broadest claim, but not a dependent (narrower) claim. In such cases, the broadest claim will be fully described but not the narrower claim. Consideration should also be given to the normal expectation of the person skilled in the art. For example, the development time for a new pencil sharpener is likely to be much shorter than the development time for a nuclear fusion reactor. If it is apparent from the specification that performance of the invention is likely to take considerably longer than what would be typically expected in the art, an objection of lack of full description should be taken. This aspect of full description frequently arises in biotechnology inventions, where there may be difficulties in describing the materials adequately, or sufficiently, for reproducibility.