Australia: How do the laws of disclosure and support affect drafting patent specifications?

Last Updated: 10 May 2016
Article by Charles Tansey and Michael Zammit

The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the RTB Act) commenced 3 years ago, and with the passage of the legislation came a number of important changes to the Patents Act 1990 (Cth) (the Act), in particular to increase the thresholds of 'disclosure' and 'support' required in a patent specification. Australian attorneys will undoubtedly have been drafting specifications to these higher standards for many years, even before the passage of the RTB Act. In view of the first opposition decision to deal with these more stringent requirements1, this article may serve as a timely reminder on how these relatively new laws affect how specifications are drafted in order to comply with the higher thresholds of disclosure and support.

The law prior to, and post Raising the Bar

It is worth briefly reviewing the old laws before discussing the new laws on disclosure and support in order to provide some context to the ensuing discussion.

Sufficiency and fair basis
Prior to the RTB Act, Australian patent law required that a patent specification must describe the invention fully ('sufficiency' of disclosure), including the best method of performing the invention known to the applicant. The test was whether the specification enabled a person skilled in the art (PSA) to produce something within each claim without new inventions or additions, or prolonged study of matters which initially presented difficulty.

The sufficiency test is quite generous to the patentee, in that there was no requirement that a claim had to be enabled over its full scope, nor for every possible application of the invention to work, or to have been demonstrated to work. And even if multiple examples or embodiments of the invention were claimed, enabling only one was sufficient. The result is that patentees could gain broad protection over something which they had only disclosed in narrow terms, and that consequently the monopoly extended beyond the knowledge that the patentee has shared with the public.

Australian patent law also required that the claims must be 'fairly based' on the matter described in the specification. The fair basis test is merely whether there is consistency of the claims with the invention described, although there are several sub-tests which give the test some teeth (a 'real and reasonably clear disclosure' of the claimed invention, and whether the claims 'travel beyond the subject matter of the invention described'). The choice of sub-test for fair basis was often critical for determining whether or not fair basis was found.

The RTB reforms
The sufficiency requirement was amended by the RTB reforms to require that a complete specification must 'disclose the invention in a manner which is clear enough and complete enough' for the invention to be performed by a PSA (disclosure). Further, the Patents Act was amended from a requirement that the claims must be 'fairly based' on the matter described in the specification, to one whereby the claim must be 'supported by the matter disclosed' in the specification (support). Importantly, when assessing entitlement to a priority claim, the level of support provided by a provisional specification or priority application is determined using an identical test.

The requirements of disclosure and support
The disclosure requirement can be summarised simply: "Can the skilled person readily perform the invention over the whole area claimed without undue burden and without needing inventive skill?"2. The test which follows is whether the specification enables the PSA to perform the claimed invention to meet this requirement.

The support requirement is whether the scope of the claims corresponds to the "technical contribution to the art"3. The distinction between the technical contribution to the art and the inventive concept was explained by Lord Walker in Generics4 who clarified that the inventive concept is concerned with the identification of the core, kernel or essence of the invention which entitles the inventor's achievement to be called inventive, whereas the technical contribution to the art is concerned with the evaluation of its inventive concept.

The law on support, which has been 'borrowed' from other jurisdictions5, describes that the technical contribution to the art is either a principle of general application (a general principle that can be practically applied to make a class of products or to work a process, and where it is reasonable to expect or predict that the claimed invention will work with anything that falls within the general term), or the discrete products/methods disclosed in the specification that cannot be made or worked by applying a general principle.

In relation to what constitutes an 'undue burden', it seems that 'routine matters' or ordinary methods of trial and error which involve no inventive step are acceptable, whereas it would be considered an undue burden if the PSA had to undertake prolonged research, enquiry or experiment, or take an inventive step in order to carry out the claimed invention. The financial burden may also be considered. Matters of undue burden should be considered in the context of the nature of the invention, the abilities of the PSA in which the invention has been made, and the common general knowledge (CGK) in the art.

In brief overview, both disclosure and support require that the patent specification provide sufficient information to enable the PSA to perform the invention to the full extent of the monopoly claimed without undue burden and without needing inventive skill. Support, however, carries the additional requirements that the claims cannot be broader than is justified by the extent of the disclosure and the technical contribution to the art.

Drafting a sufficiently enabled patent disclosure

It is still possible, post- RTB, that disclosure requirements may be satisfied by a single example of the invention. For example for a claim to a product that can only have one embodiment, e.g. a single chemical compound. Alternatively, a single example may be sufficient if the PSA can readily extend the teaching of the specification to produce the invention across the full width of the claims without undue burden or the need for further invention. However, and in a departure from the old law on sufficiency, what is more likely is that a number of alternative embodiments will be required, especially where the claims are broad. For example, where the claims include a number of discrete processes/products, each must be sufficiently disclosed and enabled, otherwise it would need to be shown that enablement of one provides enablement of the others.

Disclosure (and support) also impart more onerous enablement requirements for claims which are directed to synergism or alloys, where the exhibited properties are unpredictable and it would impose an undue burden if the PSA was required to test all possible combinations to determine those falling within the scope of the claims. Claims by result such as parametric claims, and reach through claims are also affected for similar reasoning. However, the level of enablement required for principle of general application will be less than that required for claims that are directed to discrete products/methods that cannot be made or worked by applying a general principle6.

The claims must be supported by the specification

The mere mention in the specification of features appearing in the claim will not necessarily be a sufficient support. "The word 'support' means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed."7

Generally speaking, a claim will not be supported if it is so broad that it encompasses any embodiment that the inventor has not enabled and/or which owes nothing to any principle which it discloses. Alternatively, a claim will not be supported if it claims every way of achieving a result when it enables only one way, and it is possible to envisage other ways of achieving that result which make no use of the invention.

An important point to be taken from the CSR decision is to carefully consider examples which tend to contradict the broader claims, or suggest that additional integers are essential to the functioning of the invention, as such examples may affect the ultimate scope of protection. Examples should be reviewed carefully to ensure they are consistent with the technical contribution to the art. Internal consistencies should also be resolved prior to filing, or should be carefully explained in the specification.


Ideally, a patent specification should be drafted to ensure that sufficient information is provided to:

  • enable the whole width of the claimed invention to be performed by the PSA,
  • without undue burden (no prolonged research, enquiry or experiment), or
  • the need for further invention, and
  • allowing for a reasonable amount of ordinary trial and error, and
  • having regard to: the nature of the invention, the abilities of the PSA, and the CGK in the art.

In particular, the specification should provide clear guidance telling the PSA how to adjust each feature of the claimed invention so as to achieve with certitude the full combination of claimed properties.

A single example may be sufficient, but it is more likely that for broad claims the specification will need to give a number of alternative embodiments extending over the full scope of the claims. The required level of enabling disclosure will be less if the claims are directed to a principle of general application compared to claiming discrete methods/products, and the particular attention should be paid to: claims by result such as parametric claims, synergism, reach through claims, and claims to alloys. Generally speaking, the number of examples and level of detail required will depend on the area of technology and the particular invention.

It is preferable to draft claims which cover all obvious modifications, equivalents to, and uses of, that which has been described in the specification, and to draft broader claims when it is reasonable to expect or predict that all the variants covered by the claims have the properties or uses ascribed to them in the body of the specification. In doing so, the applicant should be quite clear which statements are made on the basis of experimental results, and which statements are predictive.

Attorneys should also take particular care with a priority filing, as it must meet the same disclosure requirements as the complete application. It is also preferable for information to be included in application at outset, rather than later, or attempting to rely on CGK. Issues in relation to sufficiency of disclosure and support may only come to light post grant, such as in opposition or invalidity proceedings, and may be difficult to remedy by amendment or limitation.


1CSR Building Products Limited v United States Gypsum Company [2015] APO 72 (the "CSR decision")

2 Novartis AG v Johnson & Johnson Medical Limited [2010] EWCA Civ 1039 at [74]

3 Fuel Oils/EXXON (T409/91) [1994] OJ EPO 653 (Exxon) at 659

4 Generics (UK) Ltd v H Lundbeck A/S [2009] UKHL 12 at [30]

5 see the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 Explanatory Memorandum: Item 9

6 Biogen v Medeva [1997] RPC 1 at 48

7 Schering Biotech Corp.'s Application [1993] RPC 249 by Aldous J at 252

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP ranked one of Australia's leading Intellectual Property firms in 2015.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Charles Tansey
Michael Zammit
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.