10 Sep 2025
Australia remains one of the few jurisdictions that requires a patent applicant to disclose the “best method” of carrying out an invention. This requirement is strictly enforced — and in recent years, it has become a powerful ground for revoking patents, particularly in the context of divisional applications.
A recent Federal Court decision, however, may offer some welcome clarification for applicants and their advisors.
Background: The Dometic Precedent
In the 2018 Dometic case (Dometic Australia v Houghton Leisure Products Pty Ltd [2018] FCA 1573), the Court held that:
- The best method must be disclosed as of the filing date of the divisional application
- Any improvements made between the parent and divisional filing dates may need to be disclosed
- This interpretation placed extra burden on applicants and risked introducing support issues if disclosures weren’t updated in time
What’s Changed: The NOCO Decision
In 2025, the Federal Court in The NOCO Company v Brown and Watson International Pty Ltd ([2025] FCA 887) considered the same question — but reached a different conclusion:
- The relevant date for the best method requirement is the parent application's effective filing date (or the PCT filing date)
- This view aligns with how most patent professionals and applicants already approach divisional filings
- It reduces uncertainty for those managing complex portfolios with staggered filings
However:
- NOCO doesn’t overrule Dometic — both are first-instance Federal Court decisions
- The issue remains unsettled at law until a higher court weighs in
Implications for Patent Applicants
Until a clear legal precedent is established, applicants should adopt a risk-managed approach:
If you are filing a divisional application:
- Review whether any improvements or refinements have occurred since the parent filing
- Decide whether to include these in the divisional disclosure
- Assess whether the divisional application needs an updated best method statement
If you already hold divisionals:
- Revisit divisional specs for compliance and potential exposure
- Monitor developments in case law closely
- Be prepared to defend best method disclosures if challenged
How IP Solved Can Help
At IP Solved, we help clients navigate the finer points of Australian patent law — including disclosure obligations, divisional filing strategy, and revocation risk.
We can assist with:
- Auditing divisional applications for best method compliance
- Reviewing innovation timelines to ensure alignment with disclosure dates
- Strategically drafting or amending divisional claims to minimise exposure
Contact IP Solved today to ensure your divisional patents are not only valid — but strategically positioned to stand up to scrutiny.
