Drafting for Down Under

Executive Summary

Overseas patent practitioners—particularly US patent drafters—face latent, high-risk vulnerabilities under Australian patent practice. Because foreign specifications are typically written to align with US Patent and Trademark Office (USPTO) or European Patent Office (EPO) standards, critical statutory mismatches can emerge years later when the patents are litigated before Australian courts.

Overseas applicants dominate Australian patent filings, accounting for over 92% of the ~30,000 patent applications filed annually with IP Australia, with over 40% originating in the US.

Key structural pitfalls in Australian practice include:

• An absence of a Doctrine of Equivalence: Australian courts favour literal claim construction over broad equivalency doctrines, forcing drafters to establish intermediate generalisations and alternative embodiments in the priority specification.
• Best Method at Divisional Filing Date: Under the recent Full Federal Court ruling in The NOCO Company v Brown and Watson International Pty Ltd [2026] FCAFC 44, filing a divisional without updating the specification to reflect subsequent commercial developments can invalidate the resulting patent.
• Strict Priority & Claim Broadening Restrictions: Fair basis and support requirements prevent post-filing claim broadening if the broader concept is not explicitly disclosed in the priority document.
• Divergent Inventive Step Assessment: The Australian standard ("would the skilled person directly be led as a matter of course to try...") differs structurally from US obviousness under 35 U.S.C. § 103 and the EPO's problem-solution approach, requiring explicit fallback positions in the specification.
• Abstract Business Methods and Computer Implemented Inventions: Subject matter eligibility under Australian "manner of manufacture" jurisprudence presents unique hurdles compared to US 35 U.S.C. § 101 or the EPO's "technical effect" doctrine.

Introduction:  The Source of Australian Patent Applications

The Australian Patent Office receives about 30,000 applications each year, with about 92% coming from overseas applicants and over 40% coming from the United States. About 2/3 of Australian applications are filed via PCT applications. Whilst most cases proceed through the office without incident, a minor percentage of cases end up before the courts.

Australian Patent protection is often a secondary consideration behind the major markets, generally following technology market size. A 2025 IMF calculation of GDP breakdown lists the US at 26%, Europe at 18%, China at 17% and Australia at around 1.7% of world GDP. In the patent space, the value of US Patents tends to far outweigh the value of other patents, with Australia being well down the list.

A PCT application and specification is often filed after about 1 year from the priority document filing. A PCT application constitutes something close to a potential global patent application, being a patent pending in around 160 countries. Eventually, after about 2.5 years from the priority date, the patent journey actually starts in each country. It is important to note the time gap of about 4 years from the priority document filing date and eventual grant or acceptance of a patent.

As the vast majority (>92%) of patent specification drafts come from overseas, these drafts have been created for the major jurisdictions with little thought to the Australian environment, with most attorneys drafting to align the applications with the major jurisdictions (US, Europe).

This is likely to lead to some bewilderment, when foreign attorneys and applicants litigate their patents many years later before the Australian Courts only to find unique fundamental problems dating all the way back to the priority document or PCT filing.

In this article, we review a number of the drafting pitfalls with reference to an illustrative example and offer some advice for patent drafters to abate future issues.

The NOCO case: an illustrative example

An illustrative example of Australian specific drafting issues is the recent Australian appeals court decision of NOCO Company v Brown and Watson International Pty Ltd [2026] FCAFC 44, where the Australian patent derived from an earlier US drafted application via the PCT procedure. The NOCO case is illustrative of the problems US Applicants can get into when trying to extend their patent protection to Australia.

NOCO battery jump starters – the initial patent draft 

PCT application PCT/US2014/045434 entitled: “Portable Vehicle Battery Jump Start Apparatus with Safety Protection”, was filed by the NOCO company with a 2014 priority date. The NOCO company website (no.co) reveals NOCO is an Ohio based company founded 110 years ago by Joseph Nook, and has been active in battery technology ever since. The inventors on PCT/US2014/045434 (the Jump Starter Patent) include Joseph's descendants Jonathan and William Nook, and the family company has flourished with involvement in jump starting battery business worldwide. 

The 2014 Jump Starter Patent relates to the useful idea of having a system which checks the jump starter cables are connected properly before activating a surge battery to assist in getting supplemental power on demand. It sounds like a great safety idea, useful when you have a flat battery on a dark and stormy night and are getting nervous about connecting the jumper cables correctly before turning the switch! Was that “red to red” & “black to black” again? 

Brown and Watson International Pty Ltd (BWI) is an Australian company also active in battery technologies and founded over 70 years ago in 1953 on the outskirts of Melbourne. 

NOCO and BWI, are significant players in the same battery jump starter market, and have recently clashed before our courts, at an appeal level.

The initial skirmishes – patent office prosecution

Importantly, during examination, NOCO initially ran out of time to gain acceptance, as a result of various delays and a strategic submissions of prior art just before the examination date.

Under Australian office practice, it is necessary to overcome the examiner’s objections within 12 months of the first examiner’s report.

Standard previous practice when you run out of time is to file a divisional application to restart the examination process. This is along the lines of a US “Request for Continuing Processing (RCE)”, which also restarts the examination process. However, as shown below, the divisional process is significantly different from the  US RCE process.

NOCO filed a divisional application to continue the prosecution of the case. An alternative action is to go to a hearing (like a US appeal brief), which was previously considered the expensive, less desirable option, but which is now likely to be more readily utilised.

The battle royale -litigation

After gaining acceptance of the divisional applications, the real battle started. BWI initially opposed the patent and NOCO subsequently sued for infringement. BWI counter claimed for invalidity.

The court battles have now stretched over 9 years. In the latest appeal decision, BWI has prevailed on most grounds, with the appeals court finding all the derivative NOCO patents invalid.

Avoiding the Patent Drafting Pitfalls

The case history highlight a number of pitfalls which need to be addressed by foreign patent drafters to minimise the chances of invalidating their subsequent Australian granted drafts. 

These pitfalls have been discussed below:

Pitfall #1: There is no Australian Doctrine of Equivalents

Most US drafted priority documents are drafted with the knowledge of the potential application of the US doctrine of equivalence to catch future infringers who take the essence of the invention whilst skirting around the literal wording of the claim. This allows the claim to be, by implication, for something broader than the strict literal words used. 

Recent UK and European decisions also allow for a certain degree of claim broadening in recognising a limited form of doctrine of equivalence.

In Australia, it is best to consider that the claims will be given quite a literal interpretation. The claims in the priority document should be drafted quite broadly initially, with many fall back positions. 

Although our courts often quote a purposive approach to claim infringement, major cases such as GlaxoSmithKline Australia Pty Ltd v Reckitt Benckiser Healthcare (UK) Limited [2013] FCAFC 102, suggest an almost literal interpretation of the claim will be applied, and the intelligent defendant can skirt around the essence of the claims with the knowledge that there is no doctrine of equivalents to catch their activities.

In the NOCO case, the court followed the law that: “The plain and unambiguous meaning of a claim cannot be varied or qualified by reference to the body of the specification…”, to effectively require the claims to be limited to FET transistors on the basis of the claims in the priority document.

Keeping in mind that we have no doctrine of equivalents may reduce the pitfall of knowing the claim will be interpreted literally and not cover equivalents.

Pitfall #2 – Difficult claim broadening during prosecution

In the NOCO case, the priority document continually referenced the use of Field Effect Transistors (FETs) as power switches. The applicant tried to expand the claim from FET to the more general Power Switches, with the expert Persons Skilled in the Art (PSA) agreeing that most forms of other power switches, such as relays, could be used. However, the court struck the broader claim down, holding that the claim had to be limited to FETs, refusing to accept the priority document would extend to other switches even though the PSA would consider the extension obvious.

The Court identified the principle at paragraph [140]:

it is not sufficient for the priority document to provide a starting point from which the PSA may transition from one invention to another by use of the CGK; the mere fact that it would be obvious to the PSA to use the disclosure in the priority document to produce what is claimed is not enough to obtain priority if, properly characterised, the priority document and the claim are for different inventions: ToolGen at [193]; Miele at [304];

To steer clear of this pitfall, patent drafters face the difficult task of determining all equivalents at the priority document drafting stage and perhaps inserting separate broad claims and intermediate claims which may later be narrowed down during prosecution. Keep in mind that it may be difficult to broaden Australian claims during prosecution to cover intended equivalents once an infringer is identified.

This is somewhat equivalent to the strict support requirement in Europe under Art. 123(2) which often trips up US applicants when trying to extend their application to Europe.

Pitfall #3: the US Provisional Patent Document should be drafted as a complete document.

Given the above claim broadening issues and lack of doctrine of equivalents, a priority document such as a US Provisional Patent Application should be drafted as a fully detailed application with broad generalised claims that can subsequently narrowed if required. 

Pitfall #4: Best Method is assessed as at the Divisional (RCE) filing date

Australia continues to have a strong best method requirement, as at the PCT filing date for the initial application. 

Perhaps the most significant finding of the NOCO decision is that the divisional filing date (e.g. the RCE equivalent filing date), is the date the best method is assessed at for divisionals.

When applicants run out of time during examination and are forced to file a divisional application, they are also required to review and update the specification to ensure it describes the current best method at the divisional filing date.

The court in the NOCO case was quite unconcerned as to any resulting burden this may place on applicants, and defaulted to effectively saying “that is what the statute says”. 

The unrealistic extreme burden of updating the specification when filing a RCE type divisional application is likely to lead applicants to file more hearing requests than to continue prosecution via the examination route (akin to filing USPTO appeal briefs).

However, given the nature of Australian office action prosecution, there may be no other option but to file a divisional, with the need to urgently review and update the specification. No doubt this will place almost unworkable expectations on the drafter and applicants, given the elapse of say 4 years between the priority document drafting and the divisional specification filing.

In the NOCO case, the specific advantages of using a larger battery and relay technology rather than FETs, were discovered after the PCT filing date, but before the divisional filing date. These advantages were undisclosed and were held to be enough to invalidate all the claims of the RCE divisionals as the specification had not been updated with this new information.

This change in our law may also result in every litigated divisional patent application being closely examined for best mode updates.

Pitfall # 5: Inventive step is unique in Australia (equivalent to 35 U.S.C. § 103, Article 56 EPC)

Each jurisdiction has its own approach to the inventiveness hurdle. In the United States, under 35 U.S.C. § 103, it is common for examiners to combine multiple prior art documents together in a mosaicking process to reject a claim even where there is minimal motivation to combine. 

Europe, has a “problem-solution approach” to inventive step of taking the closest prior art document and determining if the skilled person would alter the document to solve the claim’s problem.

Australia, has its own unique approach, which is perhaps more aligned with Europe. Our basic test being: “whether the person skilled in the art (PSA) would directly be led as a matter of course to try a particular approach in the expectation that it might well produce a useful result.  Other difficult to crystallise tests include: whether there is a “scintilla of invention”, whether there is “some difficulty overcome, some barrier crossed” or something “beyond the skill of the calling”.

Overall, the Australian test is difficult to provide any certainty, and normally results in an evidentiary battle in court as to what the PSA may think. In the NOCO case, the battle of expert evidence proceeded with BWI successful and the claims were held obvious.

Whilst our obviousness test is difficult for the foreign draftsperson to consider, if their drafting style is directed to overcoming both the US and European tests, it is likely the Australian obviousness test will also be overcome. The patent drafter, by drafting an application with many fall back positions, sufficient to overcome US and European obviousness objections hopefully can also overcome the Australian obviousness position.

It should also be remembered, that when a major global battle ensues, new prior art is invariably uncovered, which is not something the original drafter would be aware of when drafting the application.

Pitfall #6: Abstract Business Methods: (US: 35 USC 101, Europe: Technical Effect)

Our law for computer implemented inventions (CII) is presently in a state of flux with the patent office revising its stance as the result of a recent major decision which should see a liberalisation of grantable subject matter. 

In part 2 of this guide, we will examine what can be done for foreign patent drafters to better align their drafts with grantable subject matter whilst still being alert to the US and European requirements.

What can be done?

A number of steps can be taken at the priority document drafting stage:

· Draft the priority documents with the European Art. 123(2) added manner issues in mind, making sure your support requirements are satisfied, with future claims being ‘directly and unambiguously derivable’ from the specification as filed.  This is likely to significantly reduce Australian issues.

· Include lots of intermediate generalisations in the specification body and initial claims, noting how the claims will be interpreted without a doctrine of equivalence.

· Draft full specifications at the priority document stage, as the priority document is the one later claims are benchmarked against.

· Consider drafting multiple rolling priority documents before the PCT filing date.

· Consider paying the excess claim fees during Australian prosecution rather than filing carve out divisionals.

· Consider taking the case to an examination hearing rather than filing divisional/RCE type applications, which will then require specification review and update. Conduct a formal best-method review and specification update prior to filing any divisional application in Australia.

Conclusions

Over 90% of Australian patent applications have their initial drafts prepared for filing in foreign major patent offices. Most of these are filed as PCT applications which, in theory, comprise Australian complete applications which are alive for at least 18 months before they even enter the Australian patent office.

The significant divergence between Australian and major international patent offices & laws, exposes these applications to significant vulnerabilities years after the initial draft has been created and filed.

The net result is that Australia fails to be a strong bastion of patent rights and continues to be fraught with looming dangers for foreign patent applicants. 

A Guide Only

The above discussion should be treated as a helpful guide only, developed to help global patent applicants and their attorney to draft patent specifications that are less likely to eventually be held invalid in Australia.

Of course, each case will have its own circumstances. For specific case issues, please feel free to reach out to Peter Treloar via email at petertreloar@treloarip.com to arrange a time to discuss your case.

Peter Treloar

Treloar IP

www.treloarip.com

Email: petertreloar@treloarip.com

Peter Treloar is an Australian and New Zealand Patent & Trade Mark Attorney with decades of experience in obtaining Patents, Designs and Trade Marks in most major global jurisdictions, and dealing with some of the world’s most complex technologies in the Electrical, Optical and Mechanical areas.