[The IPKat] No appeal against divisional "best method" decision in Australia – where to next?
Claire Gregg
No appeal against divisional "best method" decision in Australia – where to next?
Dr Claire Gregg Saturday, June 06, 2026 - Australia, best method, Claire Gregg, divisional application, OzKat
The Full Federal Court of Australia recently held in The NOCO Company v Brown and Watson International Pty Ltd [2026] FCAFC 44 that the "best method" requirement is assessed based on the applicant's knowledge at the time of filing the divisional application (IPKat). Unfortunately, the patentee did not seek leave to appeal this highly controversial decision, which means that if a better method becomes known to the applicant between the parent and divisional specification filing dates, the divisional application must be updated at the time of filing to include the better method.
Adding matter in Australia
For applications with an examination request date prior to 15 April 2013, new matter could be added to the specification at any time, including after acceptance and grant. With the introduction of the Raising the Bar law, which applies to applications with an examination request date on or after 15 April 2013, it is not possible to add new matter to the specification after filing (except for the purpose of correcting a clerical error or obvious mistake). However, it is permissible to file divisional applications with additional subject matter relative to the parent application (similar to a continuation-in-part in the United States).
Essentially, this means that for pre-Raising the Bar patents it may be possible to add any missing the best method by amendment (subject to the caveat below). Meanwhile, for pending Raising the Bar applications, it may be possible to file a divisional application with the best method added (provided the parent application remains pending and, if accepted, less than three months as elapsed since its acceptance was advertised). However, it is important to note that the priority date of any claims that rely on the added matter could shift if the claimed invention is not sufficiently disclosed in the ultimate parent application.
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"Better method" Kat |
Timing is everything for post-grant amendments
While the Australian Patent Office must allow any post-grant amendments that meet the allowability criteria, amendments made before the courts are discretionary. In exercising its discretion, the court takes several factors into account, including good faith and diligence by the patentee and prejudice to other parties. A critical consideration is whether the patentee previously considered making an amendment but unduly delayed its amendment application. Thus, by applying for an amendment before the court, privilege is waived in any correspondence relating to potential amendments.
The policy objective behind the discretionary nature of amendments before the court is balancing the patentee’s interests with those of procedural fairness between the parties and the public interest.
Dealing with the divisional debacle
NOCO now represents the prevailing law in Australia in relation to the best method for divisional applications. Further, in a subsequent Federal Court decision in Orikan Group Pty Ltd v Vehicle Monitoring Systems Pty Limited (No 2) [2026] FCA 407, a single judge (O'Bryan J) agreed with NOCO. While the judge noted that the reasons were prepared before the Full Court delivered its findings in NOCO, the reasons accord with the findings of the Full Court.
As NOCO is an appeal court decision, it will take either another case to rise to the appeal level (or higher), or legislative reform, to rectify the situation. Industry groups continue to lobby for the "best method" requirement to be removed entirely from the legislation (or at least removed as a ground for third party challenges).
In the meantime, if an Australian patent or application does not disclose the best method there may be remedial steps that can be taken depending on the examination request date and status of the patent or application. Potential strategies are best discussed in person with an Australian patent attorney depending on the circumstances.
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