Australia: The art and science of understanding patent documents – 3 tips for inventors

Last Updated: 30 July 2018
Article by Michael Zammit and Jessica Chadbourne

It is very common for patent examiners to cite patent documents as prior art to support novelty and inventive step objections. However, the information in patent literature is different to the kind of information published in peer-reviewed journal articles. In the latter case, the technical information is written for other scientists/engineers and is presented in a way that is intended to convey the results of that scientific research and to present conclusions that future researchers can build upon in their own research. In contrast, whilst a patent specification also covers technical subject matter, it is primarily a legal document that aims to set out the terms by which the patent owner and others will be bound. Accordingly, even though a patent specification should always be read through the eyes of a relevantly skilled person, it is written with public officials such as patent examiners, judges and business partners in mind. It is also often drafted around a particular commercial objective.

In light of these differences, the contribution and relevance of patent literature must be assessed in a different manner to non-patent literature. The purpose of this article is to cover some useful tips on how to read and understand prior art patent literature more efficiently.

Don't just read the claims

The general structure of a patent specification is: title, abstract, background, summary of the invention, detailed description of the invention, examples, claims, and figures. It is useful to read the title and abstract to get an indication of the field of the invention. However, inventors often then immediately jump to the claims to ascertain what technical information is disclosed. In practice, we often encounter inventors who solely focus their review of a prior art patent on the claims. Some inventors deduce that because the claims seem to be quite different from the field of their own invention, the patent is not relevant. Alternatively, they conclude that because a particular feature of their own invention is not disclosed in the claims, their invention must be new in view of that patent. At first blush, these are reasonable assumptions – after all, the claims should define the invention. However, this kind of analysis is erroneous – the new invention must be assessed against the entire disclosure of the prior art patent specification.

It is useful at this point to understand what can influence the subject matter of the claims of a patent. In some cases, applicants disclose multiple inventions in a single patent application, but only pursue the main (or most commercially relevant) invention in a first application. Accordingly, just reading the claims will not necessarily give a clear picture of other inventions that may be disclosed in the patent specification. Further, for commercial reasons, claims can sometimes be directed to a specific embodiment of the invention, but a broader form of the invention contained in the detailed description may be highly relevant. An additional complication is that different claims can be pursued in different jurisdictions.

It should also be remembered that, until the claims are granted, they are a work-in-progress. In the usual course of events, patent applications are filed and initially published with broad claims. During the patent prosecution process, the claims are examined and typically narrowed in view of prior art raised by the examiner, and the patent is again published at acceptance/grant with those narrower claims. Under some circumstances, claims can also be amended post acceptance/grant, in which case the patent will be published again.

Therefore, for the above reasons, it is certainly useful to read the claims – but it is more important when evaluating the disclosure of a patent specification to read the detailed description in full, including, in particular, the examples.

It is also worth noting that the status of the patent – i.e., whether it was/is granted, in force, lapsed or expired, is not a relevant consideration when assessing the disclosure of the specification. Patent documents cannot be dismissed on the basis that they did not proceed to grant or are not currently in force.

Scrutinise the examples

In many cases, applicants have limited resources and only generate a limited number of embodiments of the invention for inclusion in a patent application. In order to maximise the commercial value of that patent application, the attorney handling the case will usually claim the invention broadly around that limited number of embodiments. Of course, the reason for claiming broadly is to cover enabled, routine alternatives and to maximise claim scope up to the limit of what has been previously disclosed. In practice, the intent is to claim broadly enough to overlap with the prior art and then amend during prosecution up to the limit of the prior art, or to what is not obvious in view of that prior art. Claiming broadly can also reduce the likelihood that an infringer can avoid infringing the claims.

The net result can be, however, that inventors narrow the claims to their own inventions in view of patent prior art that makes broad claims, or worse – they may set aside their invention altogether.

A better starting point for inventors is therefore to review the examples of the prior art patent and compare their new invention against those actual examples to ascertain whether their invention is new. If there are similarities between the actual examples and a potential new invention, it is then prudent to consider whether the similarities are likely to constitute routine alterations or substitutions (an ethyl group for a methyl group in a chemical compound, for instance) or would otherwise be unlikely to have any measurable effect (a slightly different percentage of a non-active excipient, for instance). Conversely, if there are one or more differences between actual examples and a new invention that appear to give rise to a surprising or unexpected technical effect (superior efficacy or stability, for instance) – then an inventor may be in a position to argue novelty and inventiveness over a patent disclosure with broad claims.

As mentioned above, patent applications are not peer reviewed, meaning the validity of the technical information in a patent (i.e., experiments in the examples) is not subject to the kind of scrutiny that a peer reviewed journal article will receive. Because the technical information in a patent will only be assessed in patent validity proceedings, the information is usually assumed to be accurate by a patent examiner. Accordingly, it may be worthwhile repeating experiments in a highly relevant patent specification where the accuracy of the results is in question. This may assist in overcoming inventive step rejections over that patent prior art.

Pay attention to detail – but don't be deterred by a broad specification

In addition to having broad claims, it is very common to encounter patent documents that include long lists of options and alternatives – be these applications (e.g., medical conditions), active ingredients (e.g., substituents and/or chemical compounds), non-active components (e.g., excipients, stabilisers, colours), physical parts (e.g., joints, adhesives, materials), etc. Such lists are often included during drafting to demonstrate how components in specific examples can be replaced or altered in a routine manner without departing from the spirit of the invention (in patent terminology, to meet support and enablement requirements). However, in practice, a patent applicant has rarely tested each and every combination. Therefore, a new invention that combines selected features from across multiple lists and thus appears to be disclosed in a broad patent document is not necessarily anticipated. If there were certain technical barriers that had to be overcome to make that combination, for example, or the combination gives rise to a surprising or unexpected technical effect – there is scope to argue rejections over broad patent prior art disclosures.

Notwithstanding the above, it is worth remembering that features which are not explicitly disclosed in a patent prior art document can be implicitly/inherently disclosed. Accordingly, it is important to read patent prior art through the eyes of the skilled person.

Finally, although terms in patent documents are usually given their ordinary meaning in the relevant art, it is permissible for the description to give terms special meanings. That is, the patent might be its own dictionary. Furthermore, different attorneys may use different terminology to refer to a feature. Because the language of a patent is very important, and misunderstanding or misinterpreting a technical term or even a commonly used word that has a very specific meaning in patent specifications (e.g., "consisting" in a patent specification is generally interpreted in the exhaustive sense) can lead researchers astray, it is important to read the patent literature carefully to ensure that a relevant disclosure is not dismissed due to terminology differences.

Conclusions and summary

Patent research is a tedious task and sometimes a researcher may dismiss a prior art patent on the basis of a title or abstract, or even the claims, when the relevant disclosure is contained in the examples or detailed description. For this reason, we recommend reading patent documents in full, paying particular attention to the examples. In this way, you can provide your attorney with valuable information on the content of a prior art patent as read through expert eyes, which can streamline the patent prosecution process. More importantly, this may reduce the possibility of dismissing valuable IP in view of, for example, broad patent prior art disclosures.

The content of this article is general in nature and must not be relied on in lieu of advice from a qualified professional in respect of your particular circumstances.

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.

Michael Zammit
Similar Articles
Relevancy Powered by MondaqAI
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 Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
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
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

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 or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq 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 of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions