Timely Reminder on the Best Method Requirement in Australian Patent Applications
In a recent Australian Patent Office (APO) opposition decision[1], MAF Agrobotic’s patent application was held invalid for not disclosing the best method of performing the invention in the specification. This decision highlights the importance of ensuring the best method is disclosed in the specification at the time of filing an Australian patent application. Failure to do so can be fatal to the validity of the application.
Best Method Requirement
Section 40(2)(aa) of the Australian Patents Act 1990 (Cth) requires that a complete specification must “disclose the best method known to the applicant of performing the invention”.
The effect of this requirement is that “where a patent applicant knows a method which permits the invention to be more satisfactorily performed, the patent applicant must disclose that method in the specification…” [2] The question of whether the best method has been disclosed in the specification generally relies on a subjective analysis that requires an understanding of what the invention is [3].
Steps for determining whether the requirement has been satisfied was succinctly summarised by the Delegate as follows:
- What is the invention for which a best method must be provided;
- What method is described in the specification; and
- Was the applicant aware of a better method? [4]
The Current Case
MAF Agrobotic’s patent application related to a method and device for optically analysing fruit and vegetables for the purpose of sorting them using a colour CMOS camera to capture images in both visible and infrared ranges. Compac Technologies Ltd (the opponent) asserted, inter alia, that the specification did not disclose the best method known to the applicant at the relevant time.
The Delegate agreed that the specification did not provide clear and unambiguous explanations of the nature and content of Figure 3, specifically in relation to the camera or type of cameras utilised to perform the invention.[5]
The Delegate stated:
“…the evidence suggests that the camera or type of cameras represented in Figure 3 is better than any other colour camera that the PSA would have been expected to be able to identify and procure for the implementation of the invention….on the balance of probabilities, I consider that the Applicant also knew that, hence describing the performance of this camera or type of cameras as unexpected discovery.” [emphasis added] [6]
In conclusion, by not identifying the camera or type of cameras used in the method, the Delegate held that the specification did not disclose the best method of performing the invention known to the Applicant and the application was refused.
The implication of this finding was that it was not necessary to decide on any of the other grounds of opposition[7].
No appeal was filed.
At What Date is Best Method Assessed?
In the Dometic decision[8], the relevant date for assessing best method was determined to be the filing date of the complete specification. However, it was further considered that, in the case of a divisional application, the relevant date for disclosing best method was the date of filing the divisional application and not the effective filing date (i.e. the date of filing the parent application). Following this logic, it would be permissible to file a divisional application that included the best method known to the applicant at that time.
However, it has since been held in NOCO decision[9] that the relevant date for assessing best method in a divisional application is the date from which the patent term runs, i.e. the date on which the earliest relevant complete application was filed, including a PCT application, not when the divisional application itself was filed.
Can MAF Agrobiotic Fix the Best Method Issue?
Returning to MAF Agrobiotic’s patent application, a pending divisional patent application currently remains. Notwithstanding a potential added matter issue, on the basis of the Dometic decision, a further divisional application could be filed to include the missing details in relation to Figure 3, i.e. details of the cameras, in order to satisfy the best method requirement.
However, according to the NOCO decision, even if a divisional application remains pending, the best method requirement must have been met at the effective filing date of the application, regardless of when the divisional application was filed. On this basis, failure to disclose the best method known at the time of filing the original application cannot be remedied.
And Finally…
It should be noted that whilst the NOCO decision has been welcomed as a sensible approach, both the Dometic decision and the NOCO decision were issued by single judges of the Federal Court, so neither is formally binding on another single judge. Until the issue is heard before the Full Federal Court, best practice should prevail. Applicants should always ensure that the best method known of performing the invention is included in the specification at the time of filing any patent application in Australia (or PCT application). Failure to include these details could be fatal to validity of the Australian patent application and any further divisional applications filed thereafter.
If you require advice on best practice while filing a patent application, MBIP’s qualified team of patent attorneys can help. Members of our team have in depth experience in patent filing and prosecution, as well as opposition and other contentious matters, and are skilled in developing strategies to effectively safeguard your inventions. You can contact us on 07 3369 2226 or by filing out the Book a Meeting form on our website.
[1] Compac Technologies Limited v MAF Agrobotic [2025] APO 37
[2] Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc [2024] FCAFC 145, at [15]
[3] Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2), at [15], [16]
[4] Kineta, Inc. [2017] APO 45 (“Kineta”) at [29]; The Delegate’s summary follows an analysis of the decision by Bennet J in Expo-Net Danmark A/S v Buono-Net Australia Pty Ltd (No 2) [2011] FCA 710 [16] wherein Her Honour went on to recite the approach adopted by the Supreme Court of South Africa Transvaal Provincial Division Harms in Enka BV v E I Dupont De Nemours & Co, (1987) BP 13 (TPD) and stated that the 5 step analysis was useful. Bennet J referred to the 5 step analysis
[5] Compac Technologies Limited v MAF Agrobotic [2025] APO 37 at [166]
[6] Compac Technologies Limited v MAF Agrobotic [2025] APO 37 at [167]
[7] Compac Technologies Limited v MAF Agrobotic [2025] APO 37 at [170]
[8] Dometic Australia Pty Ltd v Houghton Leisure products Pty Ltd [2018] FCA 1573
[9] NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887
