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Section 40(2)(a) – Enablement
Warren Chandler
Warren Chandler

A general principle of the patent system is that in exchange for exclusive rights given to a patentee, the patentee must share with the public information necessary to make and use the invention. If the full scope of an invention defined in a patent claim cannot be performed, without undue burden, having reference to the patent description the patent document may be invalid for lack of enablement.

Raising the Bar

It has been a requirement since 15 April 2013, following Royal ascent of the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, that under subsection 40(2)(a) of the Patents Act 1990 (Cth) a complete patent 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

This replaced the pre-Raising the Bar ‘sufficiency’ requirement where it was enough that a patent specification teaches only one way of performing an invention. Consequently, a patentee could be entitled to a patent claim extending beyond the invention disclosed.

Since April 2013 there has been little guidance from case law on the application of s40(2)(a) hence strong reliance on the Raising the Bar Explanatory Memorandum, to understand the scope of a disclosure which is “clear enough and complete enough”.

Explanatory Memorandum

The Explanatory Memorandum states: “s 40(2)(a) requirement is intended to align the disclosure requirement with that applying in other jurisdictions….”. The wording of s40(2)(a) is similar to s14(3) of the Patents Act 1977 (UK) and art. 83 of the European Patent Convention, which have been interpreted as imposing the requirement of enablement across the full width of the claims. What does this mean?

Some guidance is provided by the Federal Court in Jusand Nominees Pty Ltd (Applicant) v Rattlejack Innovations Pty Ltd (First Respondent) [2022] FCA 540.

Actions Before the Federal Court

In this case the applicant commenced proceedings for patent infringement in relation to a number of Innovation Patents (collectively the Patents), and the First respondent cross-claimed for revocation of the patent claim(s) on grounds including s40(2)(a) for lack of enablement.


In underground mines, a significant problem concerns drill rod failure where a drill rod breaks somewhere along its length to become stuck in a bore which can subsequently become dislodged and fall down the bore exposing miners in cavities below to potentially serious injury and/or damaging equipment.

The invention was directed to ‘a safety system for protecting against a hazard of a drill rod failure in a drilled rock bore extending above the horizontal, and especially a hazard posed by a broken drill rod section lodged with the bore’.

The alleged Infringement comprised a long plastic spear-shaped device having two overlapping parts. The device is attached to the end of a drilling rig and then pushed up into a bore where it is intended to stop broken drill rods from falling from the bores.

Patent Claim(s)

The relevant claim(s) of the Patent(s) broadly define a safety system comprising:

an anchor member configured to be fixed in a proximal end region of the drilled bore adjacent a rock face; and

an impact reducing member for reducing an impact of a broken drill rod section striking the anchor member;

wherein the impact reducing member is configured to be located within the proximal end region of the bore and to extend within the bore above the anchor member to be impacted or struck directly by the broken drill rod section falling within the bore.

There was no express reference to materials in the claims of the Patents.

Technical Description

The description of the components of the safety system include a functional limitation that must be met by materials having suitable properties. At para 389 it was submitted by the applicant, that ‘it is self-evidently “plausible” that a range of materials may prove to have mechanical properties that enable their use in making one or more components of a safety system product as claimed’.

There is no disclosure anywhere in the Patents that the anchor member of the safety system, or the system as a whole, can be made of any material other than steel, such as plastic. The Patents give no guidance as to what material other than steel might be suitable to make the safety system, or what properties of a material might make it a suitable candidate. There is no enabling disclosure of anything that falls within the claims other than a safety system made from steel (mild steel).


The first respondent submitted, and it was accepted in the primary judgement, that to make a safety system out of plastic (or another material other than steel), the skilled person would need to undertake a process of prolonged research, undue work, enquiry and experiment given the lack of any assistance in the Patents.

The effect is that sufficient information must be provided in the description to enable the whole width of a claimed invention to be performed by the skilled person without undue burden, or the need for further invention.

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About the author
Warren Chandler
Senior Associate, Patent & Trade Mark Attorney
Warren Chandler is a Melbourne IP attorney specialising in engineering, chemical patents, biotechnology, and pharmaceutical patent applications.

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