Subsection 40(3A) of the Patents Act 1990 was amended by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (the Act) to provide that claims may not make reference to graphics unless absolutely necessary to define the invention. Some stakeholders have raised concerns that this implies that a claim may not include any graphical elements such as structural chemical formulae.
IP Australia considers that the interpretation of subsection 40(3A) is limited to the situation where claims make cross-reference to graphical elements elsewhere in the specification. This is clear when read in the context of the amendments made by the Act to permit specifications to include graphical elements as well as drawings, and in the light of the explanatory materials to the Act and to the Raising the Bar Act which introduced subsection 40(3A). IP Australia does not object to claims that include chemical or mathematical formulae.
However, to put the matter beyond doubt, a specific definition of ‘graphic’ could be introduced into the Patents Act 1990 to make it clear that the term refers to an element of the specification, like the description or drawings.
On hold 1-Apr-2020
Issue to be considered in future. Other matters of higher priority will be considered first.