This syllabus rewards treating each topic as a paired legal test rather than a heap of notes: novelty against inventive step, claim construction against fair basis, amendment limits against divisional practice, Paris filings against the PCT. The recurring difficulty is applying the Australian version of each test — built on common general knowledge, the skilled addressee, and the disclosure as filed — to a fresh fact pattern. Start every topic by writing the test out, then drill it against short scenarios and check your reasoning order. Two worked scenarios, a drafting exercise with a rubric, and a decision table below are built for that drill.
Separating Common General Knowledge from Prior Art Documents in Inventive Step
In Australia, inventive step is tested against common general knowledge first, and only then against prior art documents — alone, or where common general knowledge prompts their combination — not against an undifferentiated pile of publications.
Common general knowledge (CGK) is what the skilled person in the field would know as a matter of general acceptance: standard textbooks, widely used handbooks, and knowledge assumed in a normally equipped workshop. A published paper can be citable prior art for novelty yet fall short of CGK, because publication alone does not show general acceptance. Under the Australian inventive step structure, obviousness is assessed against CGK together with a single prior art document, and documents combine only where CGK would prompt the skilled person to combine them.
Scenario: an attack on a claim for a spring-loaded valve seal relies on three patent documents, none standard reading in the field. The mistake is treating each published document as part of the skilled person's baseline and building a mosaic of all three. The better analysis isolates what is genuinely CGK — say, ordinary seal design from a standard handbook — and tests obviousness against that plus one document. If CGK would not direct the skilled person to those documents together, the combination step is unavailable and the attack collapses. That ordering error changes the outcome, not just the presentation.
Construing Claims Consistently for Both Infringement and Validity
Australian claims are construed as a person skilled in the art would understand them, in context, and the same construction governs infringement and validity; an interpretation that keeps a claim valid must still capture the accused product to support infringement.
Construction starts with the skilled addressee reading the whole specification, using the description to inform meaning without letting examples rewrite the claims. Whether a feature is essential follows from the claims and specification as a whole: if an essential feature is absent from an accused product, direct infringement fails regardless of how similar the overall design looks. Work from the claim text outward; the description explains terms, it does not confine a claim to a preferred embodiment unless the language requires it.
Build a two-column habit: in one column, construe each limitation and test the accused product; in the other, test the same construction against the closest prior art. Tension between the columns is normal — a construction that keeps the claim novel may narrow infringement, while a broader reading may do the reverse. Resolving the tension means returning to the specification and asking which reading a skilled addressee would actually adopt, rather than adopting whichever construction happens to win the current question.
Drafting Claims That Stay Fairly Based on the Description
Fair basis ties claim scope to the description: a claim covering a genus needs disclosure and teaching sufficient to make the whole scope credible, not a single worked example plus the word 'preferably'.
Test fair basis claim by claim. Compare the scope of the claim language with the extent of the disclosure: does the description describe the wider class, or only one member, and does it teach that variations beyond the example are expected to work and why? Enablement runs alongside — the skilled person must be able to work the invention across the claimed scope. A proportionality habit helps: the more generalised the claim, the more the description must generalise with it.
Exercise: take a short specification describing a single polymer blend example with measured properties, then draft an independent claim over a genus of such blends. Draft before reading the rubric below. Expected observation: with species-only disclosure, a genus claim should feel unsupported at the first two checks — the useful outcome is spotting the drafting gap conceptually, because after filing the description can never be widened to fix it. Repeat the exercise with a specification containing generalised teaching and watch which checks start to pass.
- Check 1 — Can you point to description language covering members of the genus beyond the worked example?
- Check 2 — Does the description explain why the wider class is expected to behave the same way?
- Check 3 — Could a skilled person make and use an untested member of the genus without undue burden?
- Scoring guide — treat these as learning milestones for self-assessment, not as predictions of any exam outcome.
Amending Claims Without Importing New Matter
Amendments during prosecution must stay within the disclosure of the specification as filed; matter appearing in lab notebooks, later reports or informal correspondence cannot be imported, no matter how contemporaneous it was.
The amendment test compares proposed claims with the description as filed: is the added feature actually disclosed, or clearly and unavoidably implied? Ranges can be narrowed, examples promoted into claims, and combinations of disclosed features assembled — but a genuinely new feature, value or result cannot be introduced to overcome an objection. Broadening has its own constraints, and a divisional application inherits the same boundary: it cannot extend beyond the parent as filed, so a divisional is no escape hatch for new matter.
Scenario: an examiner objects to claim breadth, and the applicant proposes a claimed temperature range taken from a lab notebook written before filing but never mentioned in the specification. The mistake is treating the notebook as part of the disclosure because the data existed at filing. The better decision is to confine the amendment to ranges or features the description actually contains, or to argue the claim as filed. The stakes are absolute here: an amendment objection of this kind leaves no cure within the application, and conceding scope early preserves a grant rather than accumulating objections.
Choosing Between the Paris Convention Route and the PCT Route
The Paris Convention and the PCT both preserve a priority year; they differ in when national fees, translations and searches arrive, and therefore in how long jurisdiction-specific decisions and costs can be deferred.
Start from the shared structure: a first application in a Paris Union country fixes a priority date, and later filings within twelve months can claim that date for novelty and inventive step. The PCT adds a procedural layer — a single international application, an international search, and a defined window before national phase entry — but it never issues a patent. Every protection still ends up granted by a national or regional office under that office's own law.
Use the table below as a decision aid, not a rule. When an invention's commercial value is uncertain or the applicant is still choosing between markets, the PCT's search feedback and deferred national fees are the working reasons to select it. When the jurisdictions are few and certain, direct filings avoid PCT processing and can start examination sooner in offices that queue by filing date. Check each office's own national phase requirements rather than generalising from one office to all.
| Decision factor | Direct Paris Convention filings | PCT route |
|---|---|---|
| First substantive feedback | Comes from each national office after filing | International search report arrives before national fees fall due |
| When national costs begin | At filing in each country, within the priority year | Deferred until national phase entry, commonly around 30–31 months for many offices |
| Amendment opportunity | Handled separately in each national office | One international phase with its own amendment windows before national entry |
| Suits | Applicants committed to few, known jurisdictions | Applicants wanting search feedback and more time before committing per-country spend |
Mapping Australian Patentability Terms onto the Treaty Framework
Australia's patentability vocabulary differs from treaty and overseas vocabulary: manner of manufacture, novelty, inventive step and usefulness map onto, but are not identical with, technical character, absolute novelty and obviousness elsewhere.
Manner of manufacture is the Australian threshold question about subject matter: whether the invention is a manner of new manufacture, tested through whether it makes a proper technical contribution to the field, as opposed to a business method, scheme or aesthetic creation as such. Novelty in Australia is essentially absolute — one prior disclosure in any form can defeat it — subject to a limited grace period for certain disclosures within the preceding twelve months. Usefulness is assessed against the promise the specification itself makes.
When studying treaty and overseas frameworks, build a mapping table rather than merging the doctrines. Inventive step in Australia hinges on the common general knowledge construct, which is not identical to every overseas formulation of non-obviousness, so an argument framed for one system may not translate. Treat the mapping as conceptual: note what each framework asks in its own words, and mark where an Australian answer would need restructuring. Transferring a threshold or test wholesale between jurisdictions is the error to avoid in both directions.
Professional Duties That Shape Prosecution Conduct
Patent attorney conduct is regulated: duties of candour to the Commissioner and courts, competence, confidentiality and conflict management sit alongside technical skill, and professional responsibility is examinable subject matter in its own right.
The duties operate inside ordinary prosecution and litigation, not only in disciplinary cases. Candour means not misleading the Commissioner or a court — including in submissions about claim scope or the state of the prior art. Confidentiality and conflicts discipline govern who you can act for and what you may reuse between engagements. Privilege for communications with registered attorneys is a practical protection worth understanding precisely, including the kinds of communication it covers and those it does not.
Study this topic by mapping each duty onto a prosecution stage: confidentiality of the inventor's material at drafting, candour about prior art and claim scope when responding to objections, and conflicts discipline when acting against or alongside other parties. Then run a self-check scenario: a client asks you to characterise a prior art document in a way that downplays its relevance — decide what candour permits, what it forbids, and what you would advise the client instead of that characterisation.
- Step 1 — Write each statutory test from memory: novelty, inventive step, fair basis, manner of manufacture, amendment limits, grace period.
- Step 2 — Pair each test with a worked scenario like those above, checking your reasoning order before your conclusion.
- Step 3 — Draft one independent claim and one amendment response weekly, applying the fair basis and amendment checks in this guide.
- Step 4 — Move to timed scenario answers once the structure feels automatic; re-weight the sequence toward your lowest rubric scores.
- Readiness check 1 — You can state the inventive step baseline and the document-combination rule unprompted.
- Readiness check 2 — You can run the two-column construction check on any claim and explain tension between the columns.
- Readiness check 3 — You can classify a proposed amendment as safe or objectionable and justify it against the disclosure as filed.
- Readiness check 4 — You can explain the Paris-versus-PCT choice using the table without mixing up the routes.
References and further reading
Use these references to explore the concepts and check the latest information from the relevant organizations.