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ARTICLE · 20 SEPTEMBER 2006

The Description-Claims Relationship - "A Fair Balance?"

Spruson & Ferguson Lawyers
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A fundamental justification of the patent system is the "exchange-for-secrets" thesis, whereby a temporary monopoly is granted for a patentable invention in exchange for a disclosure of the invention to the public. Therefore, the manner in which the relationship between the description and the claims is validated is crucial in ascertaining the abstract fairness or equity of the monopoly sought.

AustraliaIntellectual Property
Owen Gee
Owen Gee
Stuart Smith
Stuart Smith
Author LinkedIn connections

A fundamental justification of the patent system is the "exchange-for-secrets" thesis, whereby a temporary monopoly is granted for a patentable invention in exchange for a disclosure of the invention to the public. Therefore, the manner in which the relationship between the description and the claims is validated is crucial in ascertaining the abstract fairness or equity of the monopoly sought.

With this in mind, Owen Gee, in his article entitled The Description-Claims Relationship – "A Fair Balance?", investigates and compares the many legal doctrines developed in Australia, the US and Europe jurisdictions to determine the adequacy of the description-claims relationship. The author delves into doctrines such as "fair basis" from current Australian and previous UK law, "written description" and "enablement" from US law, and "support" from European law.

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