Australian Patent Office Finds Grace Period Applies to Applicant’s Own ‘Secret Prior Art’

One of the cardinal rules of the patent system is that you should not disclose your invention before you have filed an appropriate patent application.  An invention must be novel and involve an inventive step at the date of first filing.  These requirements are tested against the ‘prior art’, which is generally all information made available to the public, by anyone, at any earlier time.  This includes any disclosures made by inventors and/or applicants themselves.

In some countries, however, there are ‘grace period’ provisions that permit a patent application to be validly-filed during some limited period – typically 12 months – following a disclosure.  Australia is such a country.  Under the relevant Australian law and regulations, any information made publicly available, through any publication or use of the invention by an inventor or subsequent assignee of the invention, must be disregarded as prior art, so long as a patent application is filed within 12 months of the disclosure.  It turns out, however, that this is an overly-simplistic way to describe the way in which the grace period rules work.

A complication arises in the case of what we in Australia usually call a ‘whole of contents’ citation, and which our American counterparts tend to call ‘secret prior art’.  Patent applications are not usually published until 18 months after their earliest claimed filing date (i.e. priority date), which means that it is possible for a prior application (i.e. one for which the inventor claims an earlier priority date) to be published after a later application.  Under Australian law, such unpublished (i.e. ‘secret’) applications can be cited only in relation to novelty, but not for inventive step purposes.  This means that a later applicant is barred from obtaining a patent for something that an earlier applicant had demonstrably already invented, and is entitled to claim as their own.

But what happens when the applicants of the ‘secret’ prior application and the later application are one and the same?  On the face of it, this is not a situation that the grace period was designed to address.  Grace periods are about prior public disclosures, not prior unpublished applications.  Nonetheless, in a recent decision an Australian Patent Office hearing officer has managed to interpret the grace period rules in a manner that encompasses ‘self-whole-of-contents’ applications: Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61. 

How this outcome was achieved is quite interesting.  Whether it is correct or not is another matter – in my view there are arguments either way, although I am inclined to think that the grace period does not apply to ‘whole of contents’ citations, and that the law provides more appropriate mechanisms to deal with this situation.

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Tags: Australia, Grace period, Prior art, Whole of contents

Valid ‘Notional Claim’ Required for ‘Whole of Contents’ Novelty Test

Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282 (29 March 2011)

Novelty – ‘whole of contents’ citation – requirement for drafting of ‘notional claims’

There is much to mull over in this decision of Justice Bennett, which spans 378 paragraphs plus a 40 paragraph primer.  However, in this article we wish to focus on just one aspect of the case, which we consider may have significant implications in a number of areas of Australian patent law and practice, including:

1. the way in which patent applications are examined by the Patent Office;
2. the way in which applications are prosecuted by applicants and their agents;
3. the conduct of patent oppositions and revocation actions; and
4. the effect of some of IP Australia’s proposed patent law reforms.

The issue relates to the so-called ‘whole of contents’ novelty test.  While this does not commonly arise, in our own practice we generally see a handful of applications each year where objections are raised on this basis, so it is certainly not insignificant.

A ‘whole of contents’ ground of rejection (or invalidity) of a claim arises when an Australian patent application is identified which has an earlier priority date than the claim, but which was not published until after the priority date of the claim.  Such an application is not prior art by virtue of publication, however it may represent prior rights by another applicant to claim the same invention.

According to the ‘whole of contents’ novelty rule, this type of prior application can be used as the basis for rejection of claim due to lack of novelty, but not for lack of inventive step (or obviousness).  During prosecution of applications the usual practice is simply to treat the ‘whole of contents’ reference just as any other prior art document for novelty purposes, but to disregard it for the purposes of assessing inventive step.

However, according to Justice Bennett this approach is a form of ‘shortcut’ that is not legitimate under the current law.  Rather, in order to establish lack of novelty on a ‘whole of contents’ basis, it is first necessary to establish that a valid ‘notional claim’ can be drafted in relation to the prior application that encompasses the information relied upon for the ‘whole of contents’ objection.

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Tags: Australia, Novelty, Validity, Whole of contents