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ARTICLE · 24 JUNE 2020

How to use post-filing experimental data to help establish sufficiency and support

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Recent decision confirms that post-filing data can assist in overcoming s40 objections provided the data is confirmatory in nature.

AustraliaIntellectual Property
Candace (YeeWen) Wu
Candace (YeeWen) Wu
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The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 was introduced in Australia with the intention of aligning Australia's written description requirements with those in the UK and Europe. Under the new Act, a 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 (section 40(2)(a)) and the claims must be supported by the matter disclosed in the specification (section 40(3)).

In some cases, patent applicants can submit data not included in the specification as filed (so called post-filing data) in an effort to overcome section 40 objections. But there are currently no guidelines in Australia's Patent Manual of Practice and Procedure concerning the use of post-filing data.  A recent decision in  BASF Corporation [2019] APO 34 confirms that post-filing data can assist in overcoming section 40 objections provided the data is confirmatory in

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

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