In the majority of cases decided by the Australian Patent Office (APO), it is a matter of applying well established precedents to a given set of facts. Somewhat less frequently, the APO is required to interpret the Patents Act 1990 and its associated regulations either where no court-decided precedent exists or where the APO has established its own precedents. Such precedential decisions by the APO often end up the subject of an appeal before the Australian Federal Court.
For example, in Ono Pharmaceutical Co Ltd v Commissioner of Patents [2021] FCA 643 (Ono) and Thaler v Commissioner of Patents [2021] FCA 879 (Thaler), the Federal Court overturned two precedents established by the APO.
In Ono, the Federal Court reversed a long-standing APO precedent and confirmed that an application for a patent term extension should be based on the patentee's own product, not that of a third party.
In Thaler, the issue concerned the right to name an AI machine (DABUS) as an inventor. This was a first-time decision in which the APO denied the right only to be overturned by the Federal Court.
Both of these decisions have been appealed to the Full Court.
Australian Federal Court agrees with the APO
It is not always doom and gloom for the APO. In Cytec Industries Inc v Nalco Company [2021] FCA 970, which issued on August 19 2021, the court decided that a whole of contents document (WO 873) was not citable by virtue of Australia’s grace period. This is in agreement with two earlier APO precedents, Rozenberg & Co Pty Ltd v Velin-Pharma A/S [2017] APO 61 and Biogen Idec MA Inc [2014] APO 25.
What is whole of contents?
Novelty and inventive step are generally determined by comparing the invention claimed in a patent application with information that has entered the public domain before the priority date of the patent application. However, novelty may also be assessed by reference to the disclosures in a patent application having an earlier priority date but a publication date after the priority date of a patent application under prosecution or subject of an invalidation proceeding. This latter requirement is referred to as ‘whole of contents’ novelty.
The Australian grace period
In our article ‘Grace Periods in Australian Patent Law’, it was suggested that the most common circumstance encountered in practice is:
“Public disclosure - Made publicly available in any other circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee.”
To overcome such a disclosure, it is necessary to file a complete application (which includes a PCT application) within 12 months of publication or use, provided that the publication or use was on or after April 1 2002. Taking this action means that the earlier disclosure is not citable for novelty or inventive step.
Are whole of contents documents published?
By definition, yes, but for grace period consideration the issue is the timing of the publication which must always be after the priority date of the application in question. Accordingly, are whole of contents documents ‘made publicly available’?
Cytec Industries Inc v Nalco Company [2021] FCA 970 (Cytec)
At [204] to [225], Burley J comprehensively analysed the submissions made and concluded at [217] “Despite the care with which Cytec’s submissions were put, I am unable to accept them”. Cytec contended that the grace period did not apply since the WO 873 citation was not made publicly available.
In dismissing the citation of WO 873, Burley J stated at [224] “… the grace period provision applies to WO 873. There is no dispute that the result is that WO 873 is not information that may be taken into account in assessing novelty”.
Whole of contents documents globally
One of the contentions advanced by Cytec related to the legislative introduction of the grace period and if it was intended to cover whole of contents documents. It was argued that if it was intended, then the relevant parliamentary explanatory memorandum would have mentioned it.
Of course, the contrary position could be argued, that is, if parliament intended that whole of contents documents be excluded, then the legislation could readily have recited the exclusion. For example, Japanese law provides a grace period for public disclosure but all patent documents are explicitly excluded. Therefore, the present scenario in Cytec would never arise in Japan.
In our article ‘The Holes in Whole of Contents’, practices in Australia, New Zealand and Singapore were compared. Whilst differences were highlighted in these jurisdictions, the overlay of the grace period provisions introduces yet another layer of complexity. Therefore, considerable care needs to be exercised in determining if a whole of contents document can be excluded by any grace period provisions.
Paul Whenman
Consulting partner, FB Rice
David Herman
Associate, FB Rice
