IPA patent 8.7.5.3-relationship-between-the-invention-described-and-the-invention-claimed — IP Australia Patent Manual of Practice and Procedure – 8.7.5.3 Relationship Between the Invention Described and the Invention Claimed

Also in this Chapter: 8.7.5.1 General Principles 8.7.5.2 Sub-Tests for Fair Basis ​​​​​​​ 8.7.5.4 Only Disclosure is in a Claim 8.7.5.5 Alternatives in a Claim 8.7.5.6 Claiming by Results 8.7.5.7 Reach-Through Claims 8.7.5.8 Claims to Alloys Key Legislation: Patents Act: s40 Specifications A complete specification must ‘describe the invention fully’ (s40(2)(a)). In assessing this requirement, it is necessary to take into account the whole of the complete specification, i.e. both the body of the specification and the claims ( Kimberly-Clark Australia Pty Ltd v Arico Trading International Pty Ltd (2001) 207 CLR 1 at 12-13). In contrast, when assessing whether there is fair basis within the meaning of s40(3), it is necessary to separate the claims and the body of the specification, in order to determine whether the former are fairly based on the matter described in the latter ( Lockwood v Doric [2004] HCA 58 at paragraph 49).