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On 10 April 2026, the Full Federal Court handed down its decision in The NOCO Company v Brown and Watson1(NOCO). That decision contained significant ramifications for divisional applications in Australia and the requirement for applicants to disclose the best method of performing the invention.
As no application to appeal against that decision has been filed within the prescribed period, the Full Court’s decision stands. As a result, applicants of any divisional applications are required to disclose the best method known to the applicant at the actual filing date of the divisional application.
Key takeaways
- On the Full Court’s interpretation of Australia’s best method requirement, the specification of a divisional application must disclose the best method of performing the invention known to the applicant at the divisional filing date (rather than the filing date of the ultimate parent application).
- Patent applicants should review their portfolios and consider the most effective strategy in light of Australia’s demanding best method requirement for divisionals.
- In some cases, it will be appropriate to expand the disclosure made in the specifications of new divisional filings. Where that is impracticable, or undesirable in the context of managing a global patent portfolio, alternative strategies may be required for the Australian market.
- Where it is proposed to include additional material in divisional specifications to meet the best method requirement, implications for maintenance of priority claims must be considered.
This case related to three divisional patents filed by The NOCO Company all in the same family and all in relation to a vehicle jump starting apparatus. The claimed apparatus was designed so that it would only work when the presence of the vehicle battery is detected and also when the terminals of the vehicle battery are connected to the correct terminals of the battery pack in the apparatus.
Section 40(2)(aa) of the Patents Act 1990 (Cth) (the Act) requires that a complete specification “disclose the best method known to the applicant of performing the invention”. In NOCO, the Court was asked to consider, with respect to divisional applications, when was the relevant point in time for the applicant’s knowledge of the best method? To make their decision, the Court looked at the operation of section 79B(1) of the Act which defines how divisional applications can be filed as well as the definition of “a complete specification” given in the Act.
At [207], the Court observed that because section 79B(1) makes clear that a divisional application for a patent is a “complete application”, and that the Act defines a “complete specification” as “a specification filed in respect of a complete patent application”, the filing date (in connection with the best method requirements) of the divisional specifications “could not be treated as the filing date of PCT 434 (contrary to PJ [386]), because those specifications were not filed in respect of PCT434.”
The Court concluded, at [221], “the disclosure required by s 40(2)(aa) is concerned with the later filing date being the filing of the divisional applications containing the complete specifications and what is known by the applicant of those applications at that time to be the best method.”
The impact of this for The NOCO Company was the evidence showed that due to problems with their commercial products, they had made changes to address those problems after the original PCT application had been filed and before the divisional applications had been filed. These changes included increasing the size of the apparatus battery pack and changing the type of electrical switch that turns on when the required conditions are met.
Because these improved features were known at the time of filing the divisional applications, but not included in the divisional specifications, the patents were held to be invalid for failing to disclose the best method.
What is the best method requirement?
The requirement to disclose the “best method” is a somewhat unique aspect of Australian patent practice. Similar to sufficiency and enablement, it is connected to the fundamental requirement that a patent applicant should disclose the most suitable way of carrying out their invention in return for a monopoly right.
Best method involves consideration of the following parameters:
1. It relates to “the invention”.
In this respect, the invention is not just limited to what is in the claims but is “the embodiment which is described and around which the claims are drawn” (Zoetis).2 The whole of the specification needs to be considered (Servier).3
2. It is about “performing” the invention.
Best method is not limited to methods of operation or manufacturing but also relates to physical features which enable the invention to be performed as highlighted in NOCO and Sandvik.4
3. It has to be known by the applicant.
As was the case in Dometic,5 knowledge of a best method by an inventor alone may not be enough to show that there was a failure to disclose a best method. Where the applicant is a corporate entity the best method requirement applies to knowledge of that corporate entity.
4. At the filing date of the complete specification.
NOCO has established that this is the actual filing date of any divisional application. For national phase entry applications, it is the PCT filing date.
5. It has to be the “best” method.
The Courts have repeatedly stated that a practical and common-sense approach is required and that the best method is that which “permits the invention to be more satisfactorily performed” (Zoetis). However, this does not provide a clear black and white line. Some information that the Courts have considered to constitute the best method include:
- information that enables an invention to be carried out by a skilled person
For example, in Zoetis, although the patent disclosed a number of vaccine compositions, the antigen concentrations were only disclosed by comparison to a reference vaccine. No absolute concentrations were provided. As a result, it was not possible for a skilled person to actually make those vaccines which had been shown to be most effective.
In Bluescope,6 reference in the specification merely to “special operating conditions” meant that four undisclosed operating measures were not disclosed and the skilled person would be unable carry out the claimed hot dip coating method.
In Sandvik, the design of an effective water sealing mechanism was considered critical to the implementation of the disclosed extension drilling system. Even though no claim was made to a water sealing mechanism, the lack of any disclosure of the known sealing mechanism meant the patent was found to lack disclosure of the best method of performing the invention.
- information that delivers a promised advantage of the invention
For example, in Servier, whilst several methods of salification were disclosed in the specification, the patentee had used two particular methods, not disclosed, to produce the claimed arginine salt of perindopril in a form particularly suitable for pharmaceutical use.
Similarly, the absolute antigen concentrations in Zoetis were considered material to the advantages of the invention because they enabled the manufacture of a more effective vaccine, capable of conferring immunity after a single dose.
- information that could only be determined with a significant amount of experimentation
In GlaxoSmithKline the Court observed that lack of disclosure of information relating to the best method may be problematic, even if a skilled person could obtain that information through routine experimentation which is “time consuming and expensive”.7
- information relating to commercialized embodiments
Whilst the Courts have noted that what a patentee commercialises is not necessarily determinative of what is the best method, in the NOCO decision changes to the commercialised products to solve technical problems were held to be part of the best method.
Practical implications
One outcome from the NOCO decision is that applicants need to review and possibly add best method information to the specification for a divisional application at the time of filing the divisional application.
However, for anyone who has managed large and complex global IP portfolios alongside ongoing R&D, this may be a very difficult requirement to meet. Not only is assessing whether there is a new best method at the time of filing a divisional application not a straightforward exercise, it may not be practical, nor the best option, for an applicant in the context of their global portfolio to add information to a divisional application.
Further, where information is added to the specification of a divisional application to satisfy the best method requirement, it will be necessary to consider whether this could result in deferral of priority date. For example, if the introduction of new material in the body of the divisional specification leads to a change in claim construction, there is a risk that the divisional claims may not be entitled to take as their priority date the filing date of the original parent application. In such cases, the divisional application may not be entitled to any priority date earlier than its own filing date, with significant implications for validity.
It is also necessary to bear in mind that the term of a divisional application is limited to that of the original parent application. Furthermore, divisional applications are ordinarily made publicly available shortly after filing and such early disclosure of the added material added may be undesirable.
Finally, it should be appreciated that damages or an account of profits can only be recovered with respect to infringements occurring after a divisional patent’s own publication date, rather than the earlier publication date of its parent application.
How we can help
With these pitfalls in mind, other portfolio strategies may be needed.
The knowledge and experience across our specialist attorney and legal teams in Australia ensures our strategic advice and assistance are considered in the broader context of the IP legal landscape, and always tailored to individual client current and future needs.
Footnotes
1. NOCO Co v Brown and Watson International Pty Ltd [2026] FCAFC 44.
2. Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc (2024) 306 FCR 19.
3. Les Laboratoires Servier v Apotex Pty Ltd (2016) 247 FCR 61.
4. Sandvik Intellectual Property AB v Quarry Mining & Construction Equipment Pty Ltd (2017) 126 FCR 427.
5. Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd (2018) 135 IPR 403.
6. BlueScope Steel Limited v Dongkuk Steel Mill Co., Ltd (No 2) (2019) 152 IPR 195.
7. GlaxoSmithKline Consumer Healthcare Investments (Ireland) (No 2) Ltd v Generic Partners Pty Ltd (2018) 264 FCR 474.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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