No Appeal Against Divisional "Best Method" Decision in Australia – Where to Next?

Key Takeaways

• NOCO decision ties best‑method test to knowledge at divisional filing
• Pre‑April 2013 patents can still add missing best method by amendment
• Post‑2013 filings may use divisional to capture better method before three‑month window
• Court may reject late amendments based on good‑faith and prejudice factors
• Industry lobbying seeks to eliminate best‑method ground from Australian law

Pulse Analysis

The Full Federal Court’s NOCO judgment marks a watershed moment for Australian patent practice. By anchoring the “best method” test to the applicant’s knowledge at the moment a divisional is filed, the court eliminates any possibility of retroactively inserting a superior embodiment after the parent application has been examined. This interpretation aligns Australian law more closely with the United States’ continuation‑in‑part approach, but it also raises the bar for inventors and counsel who must now anticipate the most efficient implementation before the divisional is lodged. The decision’s lack of appeal underscores its immediate authority.

For patents with an examination request before 15 April 2013, the legacy “Raising the Bar” regime still permits post‑grant amendments that can insert the missing best method, subject to standard allowability criteria. By contrast, applications filed on or after that date cannot add new matter after filing, forcing practitioners to rely on a timely divisional that captures the improved method within three months of the parent’s acceptance advertisement. However, any claims built on the added subject matter may suffer a priority‑date shift if the parent’s original disclosure is insufficient, a nuance that can affect enforceability and licensing negotiations.

The courts retain discretionary power over pre‑grant amendments, weighing good‑faith conduct, diligence, and potential prejudice to third parties. This discretionary lens, combined with industry pressure to scrap the best‑method ground altogether, signals a possible legislative overhaul in the near future. Patent owners should therefore conduct a rapid audit of pending Australian filings, evaluate whether a divisional or amendment strategy can preserve the optimal method, and engage experienced Australian patent counsel to navigate the tight procedural windows. Proactive planning now can avert costly post‑grant disputes and safeguard commercial advantage.