In 2014, we reported here that the grace period provisions were successfully relied upon in a decision of the Deputy Commissioner of Patents to overcome a “whole of contents” novelty objection. Availability of the grace period in these circumstances has now been confirmed by the Federal Court of Australia.
Cytec Industries Inc. v Nalco Company [2021] FCA 970
In Cytec Industries Inc. v Nalco Company [2021] FCA 970, Burley J confirmed that Australia's grace period provisions apply equally to information disclosed in a commonly owned Australian patent application as they would to other information made publicly available by or with the consent of the applicant. While all of the claims of the application under consideration were found to lack support and not be enabled by the disclosures in the specification, Cytec failed in its novelty challenge to Nalco's patent application.
The patent application under consideration, Australian Patent Application No. 2012220990 (“the ‘990 application”) owned by Nalco Company, had a filing date of 7 February 2012 and an earliest priority date of 25 February 2011. The earlier filed patent application relied on by Cytec published as WO 2011/037873 (“WO 873”) on 31 March 2011, was filed on 21 September 2010 and had an earliest priority date of 25 September 2009.
As an alternative to its case for lack of clear and complete disclosure (enablement), Cytec contended that WO 873 anticipated a number of the claims of the ‘990 application. As WO 873 was published after the priority date of the ‘990 application, but had an earlier priority date, it represented a “whole of contents” citation. Whole of contents novelty is considered in view of information disclosed in a published Australian patent application or PCT application designating Australia, where an actual or notional claim to that information has, or would have, a priority date earlier than the claim under consideration, and where the application was published after the priority date of the claim under consideration. 1
The grace period provisions in force at the relevant time were those prior to the commencement of the ‘Raising the Bar' amendments in 2013. Those provisions, set out in s 24(1)(a) of the Patents Act 1990 (Cth) and subregulation 2.2(1A) of the Patents Regulations 1991 (Cth), allow for any information made publicly available by or with the consent of the nominated person (i.e., the applicant) or patentee to be disregarded for considerations of novelty and inventive step, provided that a complete application is filed within 12 months of the disclosure. In relation to novelty, the relevant prior art base is defined in ss 7(1)(a), (b) and (c) of the Act.
Cytec submitted that the words “made publicly available” limit use of the grace period to prior art information other than whole of contents novelty documents. Cytec's reasoning was that ss 7(1)(a) and (b) of the Patents Act 1990 (Cth) refer to prior art information made publicly available in a single document or in two or more related documents, respectively. Conversely, s 7(1)(c), which sets out prior art information of the whole of contents type, does not refer to prior art information made publicly available.
Burley J formed the view that the intention of Parliament in drafting the grace period provisions in the Act was to allow for the circumstances and periods to be varied from time to time, by amendment to the regulations, while always requiring the information to have been made publicly available. This was because the wording of the Act plainly states that any information made publicly available by the applicant, in the prescribed circumstances, must be disregarded for the purposes of deciding whether an invention is novel. The prescribed circumstances and prescribed period, on the other hand, are set out in the Regulations. The coincidence of the words “publicly available” in ss 7(1)(a) and (b) were not considered to warrant a reading down of s 24(1)(a) as being applicable to only those sections. Additionally, the court noted that if the intention of Parliament was to limit the grace period to ss 7(1)(a) and (b), then it could have done so in terms. 2
Burley J also dismissed the concern that the patentee would, in effect, gain an additional year of protection in these circumstances. The court found that this oversimplified the position as, for instance, the later filed patent application would lose the benefit of the earlier priority date, with the consequent adjustment of the common general knowledge and exposure to other prior art information. 3
Accordingly, the court has now affirmed that the grace period provisions may be used to disregard for the assessment of novelty patent applications filed by the applicant that published within 12 months of the filing date of the claims under consideration.
Footnotes
1. Patents Act 1990 (Cth), s 7(1)(c)
2. Cytec Industries at [220]
3. Cytec Industries at [224]
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