Australia is one of a few jurisdictions where a “grace period” can be invoked in order to disregard a public disclosure by the applicant, or a public disclosure made without the consent of the applicant. The grace period is 12 months before the filing date of the complete application (not a provisional application, which is unlike the U.S). It is generally understood that the spirit of the grace period is to protect the rights of the applicant where an inadvertent public disclosure of the invention has occurred.

Recent decisions from the Australian Patent Office seem to broaden the rights of an applicant to include grace period protection for whole of contents citations published after the filing date of the complete application. This article is a short introduction to the history of this issue.

The grace period provisions are governed by section 24(1) of the Patents Act 1990:

For the purposes of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:

(a) any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
(b) any information made publicly available without any consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or from the predecessor in title of the nominated person or patentee;

but only if a complete application for the invention is made within the prescribed period.

Patent Regulation 2.2 sets out that the prescribed period for making a complete application for an invention for 24(i)(a) and (b) is 12 months from the day the information was made publicly available.

A “whole of contents” novelty objection is an objection based on information disclosed in a published Australian complete specification or a PCT application designating Australia, where an actual or notional claim to that information in the complete specification or PCT application has, or would have, a priority date earlier than the claim under consideration, but where the complete specification or PCT application was published after that priority date.

Biogen Idec MA Inc. [2014] APO 25 confirmed that the section 24(1) grace period provisions extend to whole of contents citations where the citation was published before the filing date of the complete application.

In Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61, the Delegate considered that the grace period can be relied upon to overcome a whole of contents citation published after the filing date of a complete application, that is, after the grace period had ended. The Delegate’s interpretation of the pertinent regulation is that it sets a start date but not a final date by which the relevant disclosure must be made. That is, the period starts “before” the filing date of the complete application, but the end date is not specified (at [186]). Accordingly, a whole of contents citation published after the filing date of the complete application falls within the scope of the grace period provisions.

Applying a similar logic to interpretation of the relevant regulation in place at the time of the decision, the Delegate considered that the regulation sets a final deadline by which the complete application must be filed but does not set a start date. Accordingly, the subject application was captured by the regulation even though it was filed before the whole of contents citation was published.

By most standards, the Delegate’s logic in Rozenberg is difficult to reconcile insofar as the public interest, patentee rights, and a plain reading of the legislation is concerned. Notwithstanding this, the decision in Rozenberg continues to be applied in opposition decisions from the Australian Patent Office as shown in CNH Industrial Italia S.p.A. [2020] APO 16.

In CNH, the whole of contents citation was raised in a re-examination report against the novelty of the subject application. The Applicant argued that the disputed whole of contents citation fell within the scope of section 24(1)(b) being a disclosure made without the consent of the applicant, and thus must be disregarded for the purpose of novelty.

The Delegate in CNH felt bound by the decision in Rozenberg despite the wording of regulation 2.2D of the Patents Regulations, which states:

For subsection 24(1) of the Act, for information made publicly available in the circumstances mentioned in paragraph 24(1)(b) of the Act, the prescribed period for making a complete application for an invention is 12 months from the day the information was made publicly available.

The subject application was filed under the provisions of the PCT on 7 July 2015 and has an earliest priority date of 9 July 2014. The citation was published on 22 October 2015 and has a priority date of 16 April 2014. Under this fact pattern and in light of Rozenberg, section 24 is applicable where lack of novelty arises in the “whole of contents” sense.

The Delegate went on to find that the information in the whole of contents citation was made publicly available without the consent of the applicant. Moreover, the information in the citation was “derived” from the applicant based on information supplied by the applicant to the applicant named on the citation through a collaboration between the two entities.

Consequently, section 24 applies and the information in the whole of contents citation is to be disregarded for assessing novelty.

Despite the clear advantage to patent applicants, the current practice of the Australian Patent Office regarding grace period and whole of contents citation arguably pushes the boundaries of reasonable rights afforded to an applicant. IP Australia has flagged this as a potential issue to resolve as, in their view, it represents a de facto patent term extension to 21 years.