Summary of the Clear Enough and Complete Enough Disclosure, Support and Useful (Utility) Provisions
both require
AN ENABLING DISCLOSURE
(see 2.11.3.4.2A Section 40 Enabling Disclosures)
- For sec 40(2)(a) (‘disclosure’) the enabling disclosure must be found in the
complete specification (including the claims). - For sec 40(3) (‘support’) the enabling disclosure must be found in the body of the
specification (excluding the claims).
(see 2.11.7.2A Subsection 40(2)(a) ‘Clear and Complete Disclosure’ v Subsection40(3) ‘Support’)
An enabling disclosure for the purposes of sec 40(2)(a) and sec 40(3) is one that provides sufficient information to enable the person skilled in the art to perform the invention over the full width of the claim without undue burden or the need for further invention.
When considering whether performing the claimed invention would impose an undue burden on the skilled addressee, examiners should take into account the nature of the invention and the abilities of the person skilled in the art. (2.11.3.4.3A Undue Burden)
An enabling disclosure may involve:
(i) explicit instructions for each embodiment; or
(ii) a principle of general application that can be applied to enable a range of products and/or processes.
A principle of general application is a feature defined in general terms that can be practically applied to enable the making of a class of products, or to work a process. It may be a single word in the claim or be the major part of the claim.
Inconsistency– is the claimed invention consistent with the matter disclosed in the body of the specification, e.g. is there a feature missing from the claims that is necessary for the working of the claimed invention?
(2.11.7.3A Inconsistency Between the Invention Disclosed and the Invention Claimed)
The breadth of the claimed invention must not be broader than is justified by the contribution to the art.
(2.11.7.1A Principles for Examination and 2.11.7.1.1A Contribution to the Art)
A contribution to the art is something that is disclosed in the specification that is novel, inventive andenabled by that disclosure.
A claimed invention may exceed the contribution to the art in two ways:
- The claim may encompass matter that is not enabled;
and/or
- The claim may encompass all means to achieve a result and it is possible to envisage other means that owe nothing to the teaching of the specification or any principle it discloses. (Note: If this is the case, it is also highly likely that such means have not been enabled by the specification).
A claimed invention will be useful if the person skilled in the art would recognise it to be useful. Specifically:
- The claimed invention must achieve the promised benefit; and
- The specification, as filed, must disclose a specific, substantial and credible use.
In general, the claimed invention achieves the promised benefit if the invention will do what it is intended to do, and the end result will be useful for the purpose indicated in the specification. The credible use requirement will be met if the logic and facts described in the specification would convince the person skilled in the art that the claimed use is plausible or reasonably credible.
Effective Date: 01 August 2014