Australia is one of the few jurisdictions (along with New Zealand) to still require that a patent specification disclose the best method of performing the invention known to the applicant.  The retention of the provision itself remains controversial.  

However, a recent case seems to confirm that the date at which the best method is determined is the date of filing of the earliest complete specification, i.e. the date from which the patent term is calculated. 

Background 

In Dometic Australia Pty Ltd v Houghton Leisure Products Pty Ltd [2018] FCA 1573 (Dometic), the Federal Court considered that the date at which the best method was to be determined was the complete specification filing date.  

However, in the case of a divisional application, the complete specification filing date was the filing date of the divisional application, not the date of filing of the original complete specification.  This was a substantial shift to the assumed position before this date, namely that the best method was assessed at the filing of the original complete specification. 

As a result, if considering a divisional application, applicants and attorneys needed to consider if there had been further development of the invention between the original complete specification filing date and the filing date of the divisional application.  Complications such as who needed to know about the best method (the inventors, the original applicant, or an assignee?) and whether introducing the best method added subject matter or prejudiced the right to priority (amongst others) inevitably arose.  

At a more fundamental level it was not clear why an applicant should be required to disclose developments made at a later date, yet only get the benefit of a term starting from the date of filing of the original complete specification. 

The NOCO decision 

In the Federal Court decision NOCO Company v Brown and Watson International Pty Ltd [2025] FCA 887 (NOCO), Moshinsky J found that the “best method” should be assessed at the date of filing of the first complete specification (i.e. the international filing date), not the date on which the divisional application was filed.  

In arriving at this decision, his Honour considered that the Full Federal Court in Pfizer Overseas Pharmaceuticals v Eli Lilly & Co [2005] FCAFC 224 (Pfizer) endorsed the view of Gummow J in Rescare Ltd v Anaesthetic Supplies Pty Ltd [1992] FCA 811 that best method should be assessed at the: 

Moshinsky J declined to state that Dometic was plainly wrong, but found that he needed to follow the view of the Full Court in Pfizer. 

Conclusion 

The NOCO decision represents a consideration of a single judge of the Federal Court.  It is thus open to being over-ruled by the Full Court either on appeal or in a different case.  However, it represents a common-sense approach to the enquiry of best method, thus hopefully the Australian patent system will continue down this route.  It is pleasing to see that IP Australia has quickly adopted the reasoning of this decision by amending the examination manual to read: 

More generally, this decision does not address other problems with the best method requirement, including that it makes Australia an outlier in the international patent system.  In this context, repeal of the provision entirely remains desirable. 

David Nowak - August 2025

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