IPA patent 8.7.5.4-only-disclosure-is-in-a-claim — IP Australia Patent Manual of Practice and Procedure – 8.7.5.4 Only Disclosure is in a Claim

Also in this Chapter: 8.7.5.1 General Principles 8.7.5.2 Sub-Tests for Fair Basis 8.7.5.3 Relation Between the Invention Described and the Invention Claimed ​​​​​​​ 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 Related Chapters: 2.11.3.10 Claims as Basis of Disclosure Sometimes the only disclosure of a relevant feature occurs in the claims. In this situation, the description may need to refer to the feature for the claims to be fairly based. However, there is no need for an “over-meticulous” verbal analysis requiring the exact reproduction of all the claims in the description. Rather, the specification should be read as a whole to determine whether a feature has been disclosed for the purposes of fair basis (see 2.11.3.10 Claims as Basis of Disclosure ). Note : Where a fair basis objection is raised in these circumstances, it can generally be overcome by amending the specification such that the claims mirror the description. However, where the claims are inconsistent with the specification, it is unlikely that a fair basis objection can be overcome by amending the specification, as this will result in the claiming of matter not in substance disclosed.