Objections under Section 40 of the Australian Patents Act

One of the most critical, and frequently encountered, substantive hurdles during patent examination in Australia arises under Section 40 of the Patents Act 1990 (Cth). Section 40 governs the form and content of the patent specification and embodies the core policy of the patent system: in exchange for a time-limited monopoly, the Applicant must make a full, clear, and honest disclosure of the invention to the public.

Objections under Section 40 relate to the quality and integrity of the specification itself. If these objections are not satisfactorily addressed, the application cannot proceed to acceptance and, even if granted, may remain vulnerable to invalidity challenges.

Patent Specification

The patent specification is the foundation document of a patent application. It performs two distinct but interdependent functions. First, it must teach the public how to perform the invention, thereby contributing to the advancement of technical knowledge in the field. Second, it must precisely define the boundaries of the legal monopoly sought by the Applicant. In exchange for this monopoly, the Applicant must provide a full and clear disclosure of the invention.

Section 40 ensures this balance is upheld by demanding a high standard for the quality and content of the specification. Failure to meet these standards will result in an objection from the patent examiner, and if not resolved, can lead to the refusal of your application.

Requirements under Section 40

Section 40 addresses several distinct but interconnected aspects of the patent specification. Each requirement is designed to ensure the patent system’s integrity, balancing the rights of the inventor with the interests of the public.

Clear and Complete Disclosure

Sections 40(1) and 40(2)(a) of the Patents Act 1990 (Cth) requires that the specification must disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art.

This requirement as outlined in the Sections 40(1) and 40(2)(a) is often referred to as the enablement requirement, and demands more than a conceptual description. The specification must provide sufficient technical detail to enable a person with ordinary skills and knowledge in the relevant technical field to perform the invention across its entire claimed scope, without the exercise of inventive ingenuity and without undue experimentation.

An objection will arise where the disclosure is ambiguous, omits essential steps or parameters, or claims embodiments that are not adequately taught. Overly broad claiming unsupported by corresponding technical disclosure is a common source of section 40 objections. In practice, IP Australia assesses enablement by asking whether the skilled person could reliably put the invention into effect using the specification and their common general knowledge.

Disclosure of the Best Method

Australian patent law imposes a distinct and stringent requirement to disclose the best method known to the applicant of performing the invention at the time of filing the complete application. This requirement is set out in Section 40(2)(aa) of the Patents Act 1990 (Cth) and reflects a uniquely strong aspect of Australian disclosure law.

If the Applicant knows a preferred embodiment, specific operating parameters, materials, or techniques that yields better results than other alternatives, it must be included in the specification. This prevents the Applicant from securing a patent monopoly while retaining the best implementation of the invention a trade secret.

The question of whether the best method has been disclosed is one of fact and evidence, assessed based on the Applicant’s knowledge at the filing date. As established in cases like Les Laboratoires Servier v Apotex Pty Ltd (2016) FCAFC 27, an Applicant cannot simply assert that the method is self-evident or part of common general knowledge; it must be affirmatively disclosed. The Applicant must actively disclose the best method known to them. While examiners may not have evidence to challenge this during the initial examination, it is a critical requirement for patent validity and can be a significant point of attack by a third party in the future. Accordingly, careful attention to this requirement at drafting stage is essential for long-term enforceability.

Defining the Invention

The claims are the most critical part of the patent from a legal perspective; they define the precise scope of the exclusive rights of the Patentee. Section 40(2)(b) of the Patents Act 1990 (Cth) requires that a complete specification must end with a claim or claims defining the invention. These are not mere marketing statements or technical descriptions; they are carefully constructed legal statements that set the perimeter of the Applicant’s monopoly. As in AMP v Utilux (1971) 45 ALJR 123, the High Court has noted,

“The description of the invention is not the definition of it. A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the invention which he desires to protect.”

The description explains the invention, but the claims define the monopoly. Everything within the scope of the claims is protected, while everything outside is not. For this reason, claim drafting is not merely technical writing. Instead, drafting effective claims is an art that requires a deep understanding of both the technology and the law to provide the broadest possible protection without overstepping the boundaries of legal defensibility.

Claims that are unclear, overreaching, or disconnected from the disclosed invention will attract objection and may fail to withstand later challenge.

Clarity, Succinctness, and Support

Section 40(3) of the Patents Act 1990 (Cth) imposes three interrelated crucial conditions on the claims: the claims must be clear, succinct, and supported by matter disclosed in the specification.

Clarity requires that the scope of each claim be reasonably certain when read by a person skilled in the art in light of the specification as a whole. Vague or relative terms may be permissible, but only where their meaning is adequately defined or objectively ascertainable from the disclosure.

Succinctness requires that claims not be burdened with unnecessary or redundant language that obscures their meaning. Excessive verbiage can itself give rise to objection if it compromises clarity.

The requirement for support is one of the most common and complex grounds of objection under Section 40. This means that the scope of what is claimed cannot be broader than what is justified by the technical contribution described in the main body of the specification. The test for support, drawing from UK and European case law such as Generics (UK) Ltd v H Lundbeck A/S [2009] RPC 13, is whether the claims “essentially correspond to the scope of the invention as disclosed in the description.” Claims must not extend beyond what the applicant has actually disclosed and enabled. The disclosure must provide a “real and reasonably clear” basis for the full breadth of every claim, demonstrating how the invention has advanced the state of the art.

Where claims attempt to generalize beyond the disclosed embodiments without articulating a principle of general application, support objections will arise.

Unity of Invention

Section 40(4) of the Patents Act 1990 (Cth) states that the claims “must relate to one invention only.” This is the principle of unity of invention. A single patent application cannot be used to protect multiple, distinct inventions.

Claims are considered unified when they share a common inventive concept or a “special technical feature” that defines the contribution over the prior art. Where an application claims multiple unrelated inventions, an examiner will raise a lack of unity objection.

In such cases, Applicants are required to elect one invention for continued prosecution. Other inventions may be protected through divisional applications, ensuring that valuable subject matter is not lost while maintaining compliance with section 40.

Response to Section 40 Objections

Section 40 objections are a routine and expected part of patent examination. They do not represent a rejection, but rather an opportunity to refine the specification and claims so that they meet statutory requirements.

Responding effectively requires careful analysis of the examiner’s reasoning, followed by a considered strategy that may involve claim amendment, clarification of language, or legal argument as to how the existing disclosure satisfies the Act when read through the lens of the skilled person’s knowledge.

Poorly considered amendments can permanently narrow claim scope or introduce new vulnerabilities. Conversely, a disciplined response can significantly strengthen the patent’s validity and enforceability.

Why work with us?

Section 40 stands as a gatekeeper to ensure that only high-quality patents are granted in Australia. While its requirements are stringent, they are entirely manageable with careful drafting and informed prosecution strategy. A specification that satisfies section 40 is not merely acceptable to IP Australia, it is far more likely to withstand opposition, revocation, and enforcement challenges over the life of the patent.

A well-drafted initial application is the best defense against objections, but even the most carefully prepared application can face scrutiny.

Our firm’s expertise is your advantage. We transform the challenge of a Section 40 objection into an opportunity to refine and strengthen your patent application, resulting in a valid, enforceable, and commercially valuable asset.

If you are facing section 40 objections or wish to ensure your specification complies fully with Australian requirements, contact us today for a free consultation.