I85PREP
⌘ K
AU Patent Attorney study materials
AU Patent Attorney study resources

AU Patent Attorney practice questions

One question at a time. Build your AU Patent Attorney understanding.

First 50 of 200 questions. Each one lists the choices, the correct answer, and an explanation. The checker at the top of this page saves progress in this browser when it is available.

Continue in the practice tool above to load more questions, 50 at a time.

Question 1Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Under the Patents Act 1990 (Cth), which provision sets out the primary requirement that an invention be a 'manner of manufacture'?

  1. Section 18(1)(b)
  2. Section 18(1)(a) Correct answer.
  3. Section 7(2)
  4. Section 40(2)(a)

Explanation

Section 18(1)(a) of the Patents Act states that an invention, so far as claimed, must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. The other paragraphs of section 18(1) deal with novelty, inventive step and utility, while section 7 defines the substantive tests and section 40 governs the specification.

Question 2Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which test did the High Court apply in National Research Development Corporation v Commissioner of Patents to determine whether a process is patentable subject matter?

  1. Whether the process is performed by a machine rather than by hand
  2. Whether the process produces a new and useful effect in a field of economic endeavour Correct answer.
  3. Whether the process is novel over all published documents worldwide
  4. Whether the process results in a physical article of commerce

Explanation

In NRDC the High Court held that a process is a manner of manufacture if it produces an artificially created new state of affairs that yields a useful effect in a field of economic endeavour. The test is not confined to processes producing a tangible article, so a method of eradicating weeds with a known chemical was patentable.

Question 3Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

In D'Arcy v Myriad Genetics, the High Court considered a claim to an isolated nucleic acid coding for a mutant BRCA1 protein. What was the result?

  1. The claim was not for a manner of manufacture because the information was not made by human action Correct answer.
  2. The claim was a manner of manufacture because the nucleic acid had been physically isolated from its cellular environment
  3. The claim was not a manner of manufacture because the sequence lacked novelty
  4. The claim was a manner of manufacture because the isolated sequence had commercial utility in diagnosis

Explanation

The High Court held that the substance of the claim was the genetic information encoded in the sequence, which existed in nature and was not made by human action. Isolating the nucleic acid did not give it a new and useful effect in a field of economic endeavour sufficient to make it patentable subject matter.

Question 4Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following is expressly excluded from patentability by section 18(2) of the Patents Act?

  1. A method of manufacturing a pharmaceutical compound
  2. A microorganism genetically modified to produce a protein
  3. A method of diagnosing a disease from a biological sample
  4. A method of treating a human disease by surgery Correct answer.

Explanation

Section 18(2) provides that human beings and the biological processes for their generation are not patentable inventions, and section 18(1)(a) read with the manner of manufacture requirement excludes mere methods of treatment by surgery or therapy. Methods of producing pharmaceuticals and modified microorganisms have been treated as patentable subject matter.

Question 5Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

For the purposes of the novelty requirement, what is the 'prior art base' under the Patents Act?

  1. Only information disclosed in the specification itself
  2. All information publicly available anywhere in the world before the priority date Correct answer.
  3. Only information disclosed in earlier Australian patents and patent applications
  4. Only documents published in Australia before the filing date

Explanation

The prior art base for novelty comprises the information that was publicly available anywhere in the world before the priority date of the claim. This includes published documents, prior use and other public disclosures, subject to the specific exceptions in the Act.

Question 6Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claim defines an invention by a numerical range of 10 to 20 units. The prior art discloses the same feature in a range of 15 to 25 units. For novelty purposes, the claim is:

  1. Novel, because the ranges are not identical
  2. Not novel, because the prior art range overlaps the claimed range Correct answer.
  3. Not novel only if the prior art expressly mentions the value 10
  4. Novel, because the prior art range is broader at the upper end

Explanation

Where a claimed numerical range overlaps a range disclosed in the prior art, the claim lacks novelty because the prior art discloses subject matter falling within the claim. The overlap means the prior art provides the claimed feature across part of the claimed range, so the claim is not novel.

Question 7Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Under section 7(2) of the Patents Act, when is an invention taken to involve an inventive step?

  1. When it produces a commercially successful product
  2. When it involves any step beyond the routine work of the skilled person
  3. When it is new and has not been disclosed in any single prior art document
  4. When it would not have been obvious to a person skilled in the relevant art in light of the common general knowledge and prior art information Correct answer.

Explanation

Section 7(2) provides that an invention involves an inventive step when it would not have been obvious to a person skilled in the relevant art in the light of the common general knowledge, considered alone or together with the prior art information the skilled person could reasonably be expected to have ascertained, understood and regarded as relevant.

Question 8Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

In determining inventive step, what role does the 'person skilled in the relevant art' play?

  1. The skilled person is the examiner who assesses the application
  2. The hypothetical skilled person is the standard against which obviousness is assessed Correct answer.
  3. The skilled person is a legal construct who knows all prior art worldwide
  4. The skilled person is the actual inventor named on the patent application

Explanation

The person skilled in the relevant art is a hypothetical skilled worker with the common general knowledge in the field at the priority date. Obviousness is assessed from the perspective of this notional person, not from the perspective of the inventor or the examiner.

Question 9Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claimed invention differs from the prior art only in the substitution of a known material for an equivalent known material that performs the same function in the same way. This is best characterised as:

  1. Novel because the specific material combination was not previously disclosed
  2. An obvious substitution that lacks an inventive step Correct answer.
  3. Inventive because any substitution requires a selection decision
  4. A manner of manufacture issue rather than an inventive step issue

Explanation

Mere substitution of one known material for another known equivalent that works in the same way to achieve the same result is generally obvious and does not involve an inventive step. The question is whether the substitution would have been obvious to the skilled person, not whether it was literally disclosed.

Question 10Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Section 18(1)(c) requires that the invention be 'useful'. Which statement best describes the utility requirement?

  1. The invention must be commercially profitable
  2. The invention must achieve the purpose disclosed in the specification Correct answer.
  3. The invention must have been reduced to practice before filing
  4. The invention must be capable of industrial application in Australia

Explanation

The utility requirement asks whether the claimed invention achieves the purpose or result promised in the specification. It is not concerned with commercial profitability, and it does not require that the invention have been reduced to practice before filing.

Question 11Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

In a patent specification, what does the requirement of 'best method' under section 40(2)(aa) require?

  1. The specification must identify the closest prior art known to the applicant
  2. The specification must describe the best method known to the applicant of performing the invention Correct answer.
  3. The specification must include a working example for every claim
  4. The specification must disclose the most profitable commercial use of the invention

Explanation

Section 40(2)(aa) requires the specification to describe the best method known to the applicant of performing the invention. This ensures the public receives the most effective known way of working the invention in exchange for the monopoly.

Question 12Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A specification claims a genus of chemical compounds but provides detailed guidance and examples only for a small number of species. Which requirement is most directly engaged?

  1. The manner of manufacture of the genus
  2. The novelty of the individual species
  3. The sufficiency of disclosure and fair basis of the claims Correct answer.
  4. The utility of the individual species

Explanation

Where a specification claims broadly but enables only a narrow part of the claim, the sufficiency of disclosure and the fair basis of the claims are engaged. The specification must describe the invention fully and the claims must be fairly based on the matter described.

Question 13Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

What is the effect of a 'grace period' under the Patents Act for disclosures made by or with the consent of the applicant?

  1. Certain disclosures within the prescribed period before the priority date are disregarded for novelty purposes Correct answer.
  2. All disclosures made before the priority date are disregarded regardless of consent
  3. The grace period applies only to disclosures made in Australia
  4. The grace period extends the patent term by the length of the disclosure period

Explanation

The Act provides a grace period under which certain disclosures of the invention made by or with the consent of the applicant within the prescribed period before the priority date are disregarded when assessing novelty. The protection is limited to specified circumstances and does not cover every prior disclosure.

Question 14Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

An applicant publicly demonstrates a prototype at a trade fair six months before filing, without any confidentiality obligation. What is the consequence for novelty?

  1. The demonstration may destroy novelty unless it falls within a recognised exception under the Act Correct answer.
  2. The demonstration is protected by the grace period in all circumstances
  3. The demonstration only affects novelty if it was published in a document
  4. The demonstration is irrelevant because it occurred before the filing date

Explanation

A public demonstration without confidentiality makes the invention publicly available and may destroy novelty unless a specific exception, such as the grace period for certain disclosures, applies. Public use is part of the prior art base and is not limited to documentary publication.

Question 15Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following is the correct description of the 'priority date' for a claim in an Australian standard patent application?

  1. The date the complete specification is published
  2. The date the applicant requests examination
  3. The date the patent is granted
  4. The filing date of the earliest application from which the claim is entitled to priority Correct answer.

Explanation

The priority date of a claim is generally the filing date of the earliest application from which the claim validly derives priority, such as a provisional application. Grant, publication and examination request dates occur later and do not set the priority date.

Question 16Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claim in a complete specification is broader than the disclosure of the provisional application from which priority is claimed. What is the likely consequence?

  1. The provisional application is automatically amended to match the claim
  2. The claim is entitled to priority because it shares some subject matter with the provisional
  3. The claim may not be entitled to the provisional priority date for the broader subject matter Correct answer.
  4. The entire application is invalid for lack of priority

Explanation

Priority for a claim attaches only to subject matter that is fairly based on the earlier application. If a claim is broader than what the provisional discloses, the claim may not be entitled to the provisional date for that broader subject matter, which can expose it to intervening prior art.

Question 17Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which statement correctly describes the 'fair basis' requirement for claims?

  1. The claims must be narrower than every example in the specification
  2. The claims must be approved by the applicant's patent attorney
  3. The claims must be in the same language as the specification
  4. The claims must be fairly based on the matter described in the specification Correct answer.

Explanation

The fair basis requirement, found in section 40(3), requires that the claims be fairly based on the matter described in the specification. This ensures the claims do not extend beyond the technical contribution disclosed.

Question 18Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claim is directed to a method of playing a game using a standard deck of cards, with no technical effect beyond the rules of play. How is this likely to be treated?

  1. It is a manner of manufacture because games have commercial value
  2. It is likely not a manner of manufacture because it lacks a useful effect in a field of economic endeavour Correct answer.
  3. It is excluded by section 18(2) as a biological process
  4. It is a manner of manufacture because cards are physical objects

Explanation

A scheme or method whose only substance is rules of play, without a technical or useful effect in a field of economic endeavour, is generally not a manner of manufacture. The involvement of physical cards does not by itself supply the required useful effect.

Question 19Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following best describes the 'problem-solution' approach sometimes used in assessing inventive step?

  1. Awarding an inventive step whenever the invention solves any problem
  2. Requiring the applicant to state the problem in the claims
  3. Comparing the invention only with the applicant's own earlier patents
  4. Identifying the problem addressed by the invention and asking whether the solution would have been obvious to the skilled person Correct answer.

Explanation

The problem-solution approach identifies the technical problem addressed by the invention and then asks whether the claimed solution would have been obvious to the skilled person at the priority date. It is an analytical aid, not a requirement that the problem be recited in the claims.

Question 20Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

An invention is a new use of a known compound for treating a different disease. Which statement is correct under Australian law?

  1. The new use is patentable only if the compound is also new
  2. A method of treatment claim may be patentable if the new use is novel and involves an inventive step Correct answer.
  3. The new use is excluded by section 18(2)
  4. The new use can never be patented because the compound is known

Explanation

A new and non-obvious method of treating a disease using a known compound can be patentable subject matter in Australia. The compound's prior existence does not preclude a claim to the new method of treatment, provided the other requirements are met.

Question 21Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

What is the significance of the 'common general knowledge' in the inventive step inquiry?

  1. It is the sum of all prior art documents in the field
  2. It is the knowledge disclosed in the applicant's specification
  3. It is the knowledge of the examiner at the time of examination
  4. It is the background knowledge of the skilled person against which obviousness is assessed Correct answer.

Explanation

Common general knowledge is the body of knowledge generally known and accepted by skilled workers in the field at the priority date. It forms the background against which the obviousness of the claimed invention is assessed, separately from specific prior art documents.

Question 22Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claim to a known compound is characterised only by a newly discovered property of that compound, with no change to the compound or its method of use. How is this likely to be assessed?

  1. It is novel because the property was previously unknown
  2. It is inventive because discovering a property requires research
  3. It is a manner of manufacture because the property has utility
  4. It is likely not novel because the compound itself is already known Correct answer.

Explanation

A claim to a known compound is anticipated by the prior disclosure of that compound, regardless of whether a particular property of it was previously recognised. Discovering a new property does not make the compound itself novel; protection might instead be sought for a new method of use.

Question 23Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following is a requirement for a claim to satisfy the 'clear and succinct' requirement?

  1. The claims must define the invention clearly and concisely Correct answer.
  2. The claims must be written in a single sentence
  3. The claims must be limited to one independent claim
  4. The claims must include every embodiment described in the specification

Explanation

Section 40(3) requires the claims to define the invention and be clear and succinct. This concerns the clarity of the claim language and its conciseness, not the number of sentences, the number of embodiments, or the number of independent claims.

Question 24Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

An applicant files a complete specification claiming an invention, then later seeks to amend the claims to add a feature not disclosed in the specification as filed. What is the likely outcome?

  1. The amendment is allowed because amendments may add new features at any time
  2. The amendment is likely impermissible because it adds matter not disclosed in the specification Correct answer.
  3. The amendment is allowed if the new feature is novel
  4. The amendment is allowed if the applicant pays a fee

Explanation

Amendments are not permitted to add matter that extends beyond the disclosure of the specification as filed. Adding a feature not disclosed in the original specification would generally be impermissible, regardless of novelty or payment of fees.

Question 25Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which statement best captures the relationship between novelty and inventive step?

  1. Novelty asks whether the invention is disclosed in the prior art; inventive step asks whether it would have been obvious Correct answer.
  2. An invention that involves an inventive step is automatically novel
  3. Novelty and inventive step are the same test applied at different times
  4. An invention that is novel automatically involves an inventive step

Explanation

Novelty and inventive step are distinct requirements. Novelty asks whether the claimed invention is disclosed in the prior art base, while inventive step asks whether the difference from the prior art would have been obvious to the skilled person. An invention can be novel yet obvious, and an inventive step presupposes novelty but is assessed separately.

Question 26Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Under the Patents Act, which of the following is a threshold requirement for an invention to be patentable subject matter as a 'manner of manufacture'?

  1. The invention must not be contrary to law.
  2. The invention must produce a commercially useful effect.
  3. The invention must be a physical device or substance.
  4. The invention must be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. Correct answer.

Explanation

Section 18(1)(a) requires that the invention be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies. This incorporates the broad common law concept, not a requirement for a physical device or commercial utility. The other options state requirements that are either too narrow or belong to different statutory provisions.

Question 27Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which statement correctly describes the requirement for novelty under the Patents Act?

  1. The invention must not have been sold commercially anywhere before the priority date.
  2. The invention must not have been described in a patent specification filed in Australia before the priority date.
  3. The invention must not have been used in Australia before the priority date.
  4. The invention must not have been publicly disclosed anywhere in the world before the priority date. Correct answer.

Explanation

Novelty requires that the invention, as claimed, has not been anticipated by the prior art base, which includes public disclosures anywhere in the world before the priority date. The other options describe narrower or different tests that do not reflect the full scope of the prior art base.

Question 28Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

For an invention to satisfy the utility requirement under section 18(1)(c), what must be shown?

  1. The invention must have a specific, substantial and credible utility. Correct answer.
  2. The invention must work perfectly for its stated purpose.
  3. The invention must be commercially profitable.
  4. The invention must be capable of industrial application.

Explanation

The utility requirement demands that the invention have a specific, substantial and credible utility, as explained in the Explanatory Memorandum and case law. It does not require commercial profitability or perfection, and industrial application is a separate concept under other provisions.

Question 29Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following is an essential element of the 'fair basis' requirement for claims under the Patents Act?

  1. The claims must be approved by the Commissioner before examination.
  2. The claims must be in the same language as the description.
  3. The claims must be limited to the specific embodiments described in the specification.
  4. The claims must be supported by the description in a way that is clear and complete. Correct answer.

Explanation

Fair basis requires that the claims be supported by the matter disclosed in the specification, meaning the description must provide a clear and complete basis for the claimed invention. The other options are not requirements of fair basis.

Question 30Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claim is directed to a method of treating a known disease with a known compound, but the method includes a new dosage regimen that produces an unexpected reduction in side effects. Which statement best describes the patentability of the dosage regimen?

  1. The dosage regimen may be patentable if it involves an inventive step and is novel and useful. Correct answer.
  2. The dosage regimen is patentable only if it is claimed as a composition of matter.
  3. The dosage regimen is not patentable because it is a method of medical treatment.
  4. The dosage regimen is not patentable because the compound is known.

Explanation

In Australia, methods of medical treatment are generally patentable subject matter. A new dosage regimen can be patentable if it meets the requirements of novelty, inventive step and utility. The other options incorrectly state absolute bars or misstate the law.

Question 31Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following best describes the 'problem-solution' approach used in assessing inventive step?

  1. It compares the invention to the closest prior art and asks whether the solution would have been obvious to a skilled person. Correct answer.
  2. It involves determining the problem the inventor set out to solve and assessing whether the solution was obvious.
  3. It requires the applicant to identify the problem solved by the invention in the specification.
  4. It requires the invention to solve a problem that has not been solved before.

Explanation

The problem-solution approach involves identifying the closest prior art, determining the objective technical problem solved by the invention, and asking whether the solution would have been obvious to the skilled person. It does not require the applicant to state the problem or that the problem be entirely new.

Question 32Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claimed invention is a new use of a known compound for treating a different disease. Which statement is correct under Australian patent law?

  1. The new use is patentable only if the compound itself is new.
  2. The new use may be patentable if it is novel and involves an inventive step. Correct answer.
  3. The new use is patentable only if it is claimed as a method of manufacturing.
  4. The new use is not patentable because the compound is known.

Explanation

A new use of a known compound can be patentable if it satisfies the requirements of novelty, inventive step and utility. The known status of the compound does not automatically bar a patent for a new method of using it.

Question 33Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

In assessing inventive step, what is the significance of the 'common general knowledge'?

  1. It is knowledge that is only relevant if it is documented in a single prior art reference.
  2. It is the knowledge that a person skilled in the art would be expected to have, and it can be combined with prior art to assess obviousness. Correct answer.
  3. It is knowledge that is presumed to be known by the Commissioner of Patents.
  4. It is the total sum of all public disclosures in the field, regardless of whether they are generally known.

Explanation

Common general knowledge refers to the background knowledge and skills that a person skilled in the relevant art would possess. It can be used, together with prior art, to determine whether an invention would have been obvious.

Question 34Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claim defines a genus of chemical compounds by a Markush structure, but the specification provides detailed synthesis and data for only two species within the genus. Which statement best describes the fair basis of the claim?

  1. The claim is fair basis because at least two species are exemplified.
  2. The claim is fair basis only if the genus includes all possible isomers.
  3. The claim is fair basis because the genus is defined by a structural formula.
  4. The claim may lack fair basis if the specification does not provide sufficient guidance to make the whole genus. Correct answer.

Explanation

Fair basis requires that the claims be supported by the description. For a genus claim, the specification must provide sufficient guidance or a principle to make the whole genus, not just a few examples. Without such guidance, the claim may lack fair basis.

Question 35Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following is a requirement for a claim to satisfy the 'clear and succinct' requirement under the Patents Act?

  1. The claim must include a statement of advantage.
  2. The claim must be in one sentence.
  3. The claim must be limited to a single embodiment.
  4. The claim must define the invention clearly and concisely. Correct answer.

Explanation

The clear and succinct requirement means that the claims must define the invention clearly and concisely, without unnecessary ambiguity or verbosity. It does not require a single sentence, a single embodiment, or a statement of advantage.

Question 36Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

An applicant files a complete specification claiming an invention, then later seeks to amend the claims to add a feature that was not disclosed in the specification as filed. Which statement best describes the likely outcome?

  1. The amendment is not allowable because it would result in the specification claiming matter not in substance disclosed in the specification as filed. Correct answer.
  2. The amendment is allowable if the feature is within the scope of the claims as filed.
  3. The amendment is allowable if the applicant pays a fee.
  4. The amendment is allowable if the feature is novel.

Explanation

Amendments are not allowable if they would result in the specification claiming or disclosing matter that was not in substance disclosed in the specification as filed. Adding a new feature not previously disclosed would generally contravene this requirement.

Question 37Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which statement best describes the test for 'manner of manufacture' as applied by Australian courts?

  1. The invention must be a useful art or process that has an economic effect. Correct answer.
  2. The invention must be a tangible product.
  3. The invention must produce a physical result.
  4. The invention must be a new and useful process for making a tangible product.

Explanation

The manner of manufacture test is broad and includes useful arts or processes that have an economic effect. It is not limited to tangible products or physical results. The High Court in NRDC v Commissioner of Patents (1959) 102 CLR 252 established this flexible approach.

Question 38Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

A claim is directed to a computer-implemented method that produces an improved technical effect in the operation of a computer. Which statement best describes its patentability under Australian law?

  1. Computer-implemented inventions are patentable only if they are embodied in a physical device.
  2. Computer-implemented inventions are patentable only if they are novel and inventive, regardless of subject matter.
  3. Computer-implemented inventions are not patentable subject matter.
  4. Computer-implemented inventions may be patentable if they provide a technical solution to a technical problem. Correct answer.

Explanation

Computer-implemented inventions are not excluded per se. They may be patentable if they provide a technical solution to a technical problem, such as an improved technical effect. Novelty and inventive step are separate requirements.

Question 39Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

Which of the following is a correct statement about the 'best method' requirement under the Patents Act?

  1. The specification must disclose the best method known to the Commissioner.
  2. The specification must disclose the best method known to the applicant for performing the invention. Correct answer.
  3. The specification must disclose the best method known to the inventor at the time of filing.
  4. The specification must disclose the best method known to the patent attorney.

Explanation

The best method requirement under section 40(2)(aa) requires the specification to disclose the best method known to the applicant for performing the invention. The knowledge of the inventor, attorney or Commissioner is not the statutory standard, although the applicant's knowledge may be derived from the inventor.

Question 40Patent law and practice under the Patents Act (patentability, novelty, inventive step, utility, manner of manufacture)

An examiner is assessing whether a claimed invention involves an inventive step under section 18(1)(b) of the Patents Act. Which statement best describes how the hypothetical skilled addressee is used in that assessment?

  1. The skilled addressee is the actual inventor named on the application, whose personal knowledge and insight determine whether the step is inventive.
  2. The skilled addressee is a hypothetical person with the relevant common general knowledge in the field, against whose knowledge and capabilities the claimed invention is compared. Correct answer.
  3. The skilled addressee is a panel of industry experts convened to vote on whether the invention would have been obvious to them.
  4. The skilled addressee is a legal construct with no technical knowledge, used only to interpret the words of the claims in a literal manner.

Explanation

Inventive step is assessed objectively by reference to a hypothetical skilled addressee: a non-inventive worker in the field equipped with the common general knowledge and the prior art. The comparison asks whether the claimed invention would have been obvious to that person, not to the actual inventor or a committee. The construct also informs how the specification would be understood and what routine steps the addressee could take.

Question 41Patent specification drafting, claims interpretation and construction

Under the Australian Patents Act, which part of a complete specification defines the scope of the monopoly granted?

  1. The claims Correct answer.
  2. The background section
  3. The abstract
  4. The drawings

Explanation

The claims define the scope of the monopoly, and the description and drawings are used to interpret them. The abstract is an informational summary and cannot be used to narrow or expand claim scope, and drawings only assist construction where ambiguity exists.

Question 42Patent specification drafting, claims interpretation and construction

A claim term is genuinely ambiguous and the description expressly defines it in a way that departs from its ordinary meaning. How should the term be construed?

  1. By giving effect to the definition in the description Correct answer.
  2. By adopting the narrowest possible meaning to preserve validity
  3. By referring the question to the Commissioner for a ruling
  4. By applying the ordinary dictionary meaning regardless of the description

Explanation

A patentee may act as its own lexicographer, and where the specification clearly defines a term the claims are construed in light of that definition. The ordinary meaning applies only in the absence of a clear contrary definition in the body of the specification.

Question 43Patent specification drafting, claims interpretation and construction

Which statement best describes the role of the description when a court construes a patent claim?

  1. It provides context that may resolve ambiguity in the claims Correct answer.
  2. It overrides the claims whenever the two conflict
  3. It limits the claims to the specific embodiments illustrated
  4. It is irrelevant once the claims have been granted

Explanation

The description supplies context and may clarify ambiguity, but it does not override clear claim language. It is also wrong to confine claims to illustrated embodiments, because claims may extend to equivalents and generalizations supported by the specification.

Question 44Patent specification drafting, claims interpretation and construction

What is the primary function of an abstract in an Australian complete specification?

  1. To define the inventive step of the claims
  2. To provide a technical summary for searching and information purposes Correct answer.
  3. To establish the priority date of the application
  4. To list the claims in abbreviated form

Explanation

The abstract is a concise technical summary used for searching and information dissemination. It does not define the invention, does not affect priority, and cannot be used to interpret the scope of the claims.

Question 45Patent specification drafting, claims interpretation and construction

A claim recites 'a fastener' and the description discusses screws and bolts as examples. Which construction is most consistent with Australian practice?

  1. The claim is limited to screws and bolts only
  2. The claim is limited to the best method described
  3. The claim covers any suitable fastener, subject to any express definition Correct answer.
  4. The claim is invalid because the term is too broad

Explanation

Generic claim terms are generally given their ordinary meaning and are not confined to the specific examples unless the description clearly limits them. A term is not invalid merely for breadth, provided the claim is clear and supported.

Question 46Patent specification drafting, claims interpretation and construction

Which claim format is generally preferred for clarity and for establishing a single inventive concept?

  1. A single independent claim with dependent claims refining it Correct answer.
  2. A claim consisting only of a statement of the problem to be solved
  3. Multiple independent claims covering unrelated inventions
  4. A claim that refers to the drawings without reciting features

Explanation

A single independent claim with dependent claims typically yields clear scope and a coherent single inventive concept. Multiple unrelated independent claims risk unity objections, and claims that merely state a problem or point to drawings lack definite technical features.

Question 47Patent specification drafting, claims interpretation and construction

In a claim, the transitional phrase 'consisting of' generally has what effect?

  1. It has the same meaning as 'including'
  2. It is open and permits any additional components
  3. It has no effect on claim scope
  4. It is closed and excludes additional unrecited components Correct answer.

Explanation

'Consisting of' is a closed transitional phrase that excludes further components beyond those recited. By contrast, 'comprising' or 'including' is open and permits additional unrecited features.

Question 48Patent specification drafting, claims interpretation and construction

Which term in a claim is most likely to be objected to as unclear?

  1. A feature described as 'substantially as herein described' Correct answer.
  2. A material identified as stainless steel
  3. A step described as heating to 80 degrees Celsius
  4. A dimension expressed as 10 mm

Explanation

References such as 'substantially as herein described' are generally unclear because they do not define the technical feature with precision. Concrete numerical, material, and process limitations are ordinarily acceptable.

Question 49Patent specification drafting, claims interpretation and construction

A dependent claim adds a feature that is inconsistent with the feature recited in its parent independent claim. What is the likely consequence?

  1. The dependent claim is unclear and may be objected to Correct answer.
  2. The dependent claim broadens the scope of the parent claim
  3. The independent claim automatically adopts the dependent feature
  4. The inconsistency is ignored because dependent claims are optional

Explanation

A dependent claim must incorporate all features of the claim on which it depends, so an inconsistent added feature renders the claim unclear or contradictory. Dependent claims can only narrow, not broaden, the scope of the parent claim.

Question 50Patent specification drafting, claims interpretation and construction

What is the function of a consistory clause in a specification?

  1. To state the invention in general terms that may correspond to the broadest claim Correct answer.
  2. To describe the best method of performance
  3. To list the prior art documents considered
  4. To define the priority date

Explanation

A consistory clause expresses the invention in general terms and often mirrors the broadest claim, providing support for it. It is not a prior art list, a priority statement, or the best method description.