In Australia and New Zealand, the prior art base for novelty of a patent claim includes complete applications with an earlier priority date, but which were published after the priority date of that claim. However, the assessment of novelty based on the "whole of contents" of an earlier unpublished application is actually a double patenting assessment in disguise.
A recent decision by the New Zealand Patent Office (IPONZ) in The Viking Corporation [2022] NZIPOPAT 4 (Viking) confirms that - similar to the situation in Australia - published PCT applications that designate New Zealand but never enter the national phase in that jurisdiction are relevant for the assessment of whole of contents novelty. However, the inclusion of such documents in the prior art base for whole of contents novelty goes further than is necessary to address the mischief the provisions were intended to avoid.
Origins of whole of contents novelty
Whole of contents novelty was first introduced with the commencement of the European Patent Convention (EPC) in 1977 as an alternative to the "prior claiming" approach to dealing with conflicting applications. As discussed in our previous paper, both approaches acknowledge that the applicants of the earlier and later applications have each made inventions over the prior art and are deserving of patent protection, but require the later applicant to subtract subject matter disclosed (or claimed) in the earlier application from their claims to avoid double patenting. However, unlike with prior claiming, examination of the later application for whole of contents novelty can occur before the fate of the earlier application is known.
Despite its colloquial name, whole of contents novelty is not a true assessment of novelty. The whole contents of the earlier application is only deemed to be part of the prior art base for novelty so that the subject matter to be subtracted from the later claims can be identified. Thus, whole of contents novelty is in fact a double patenting assessment. However, while double patenting can be avoided by merely excluding the subject matter claimed in the patent granted on the earlier application from the claims of the later application, the whole of contents approach requires the later application to effectively exclude all subject matter that could have been claimed in the earlier application.1 This avoids the need to wait for the earlier patent to be granted before the claims of the later application can be finalised.
Whole of contents novelty in Australia
The Australian Patents Act 1990 (Cth) (AU Act) provides that the prior art base for the assessment of novelty includes, inter alia, information contained in a published specification filed in respect of a complete application where:2
- if the information is, or were to be, the subject of a claim of the specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
- the specification was published on or after the priority date of the claim under consideration; and
- the information was contained in the specification on its filing date.
However, as discussed in our previous article, the Federal Court recently confirmed that the grace period provisions under the AU Act effectively exclude commonly owned patent applications from the prior art base for the assessment of whole of contents novelty.3
The assessment of whole of contents novelty of a claim of a later application in Australia involves asking: (i) whether there is any information in the earlier application that anticipates the claim in question; and (ii) whether that information is the subject of a claim, or could be the subject of a valid notional claim.4
A PCT application is considered a "complete application" under the AU Act and is defined as "an international application in which Australia is specified as a designated State under Article 4(1)(ii) of the PCT".5 Thus, PCT applications that designate Australia - even if they never enter the national phase in Australia - are relevant for the assessment of whole of contents novelty.
Whole of contents novelty in New Zealand
The New Zealand Patents Act 2013 (NZ Act) provides that the prior art base for the assessment of novelty includes, inter alia, the information contained in a complete specification filed in respect of another patent application if all of the following circumstances apply:6
- if the information is, or were to be, the subject of a claim of that complete specification, the claim has, or would have, a priority date earlier than that of the claim under consideration; and
- that complete specification became open to public inspection after the priority date of the claim under consideration; and
- the information was contained in that complete specification on its filing date and when it became open to public inspection.
Given the similarities in wording to the corresponding Australian provisions, the assessment of whole of contents novelty in New Zealand is likely to also require that the subject matter of the earlier application be capable of forming a valid notional claim for a claim of the later application to be invalid.
The NZ Act also recognises PCT applications as complete applications accompanied by a complete specification.7 A PCT (or "Treaty") application is defined as "an international application-(a) that contains a request specifying New Zealand as a designated State under Article 4(1)(ii) of the Patent Cooperation Treaty; and (b) that has been given an international filing date".8 The recent Viking decision confirms that PCT applications for which New Zealand is specified as a designated State on the PCT request are relevant for the assessment of whole of contents novelty, regardless of whether they ultimately enter the national phase in New Zealand.
The Viking decision
In Viking, the Applicant challenged the position of IPONZ that PCT applications designating New Zealand, but which have not yet entered or are out of time for entering the national phase in New Zealand, are part of the prior art base for whole of contents novelty. The Applicant argued that a PCT application only becomes a "patent application" under the NZ Act when it enters the national phase, as certain provisions of the NZ Act cannot have effect until the PCT application enters the national phase. However, according to the Assistant Commissioner, that proposition confuses what can be done with a PCT application with when it can be done.
The Applicant also argued that a "request" specifying New Zealand as a designated State under Article 4(1)(ii) of the PCT was not made in respect of the earlier application because the selection of PCT contracting states switched from an opt-in to an opt-out system in 2004. In other words, because New Zealand was automatically designated on the PCT request, the Applicant had not "requested" New Zealand as a designated state. The Commissioner also dismissed that argument, since it is the PCT request (not the applicant) that must specify New Zealand as a designated state. To find otherwise would mean that any national phase entry under the NZ Act would not be a valid New Zealand application under the opt-out system.
Comparison with UK and Europe
In Europe, ".the content of European patent applications as filed, the dates of filing of which are prior to the [priority date of the application at issue] and which were published on or after that date, shall be considered as comprised in the state of the art".9 In addition to European patent applications, the EPC specifies that the state of the art (prior art base) for whole of contents novelty includes Euro-PCT applications, i.e., PCT applications that have entered the European regional phase.10
The UK novelty provisions provide that the state of the art includes, inter alia, matter contained in an application for another patent which was published on or after the priority date of that invention, if:11
- that matter was contained in the application for that other patent both as filed and as published; and
- the priority date of that matter is earlier than that of the invention.
The UK only includes PCT applications in the state of the art to the extent that they have entered the national phase in that jurisdiction, since a PCT application is only considered "published" in the UK once it has entered the national phase.12 In contrast, a PCT application is considered published in Australia and New Zealand from the international publication date.13
Given the purpose of whole of contents novelty is to avoid double patenting, the European and UK approach with respect to PCT applications appears to better balance that objective with the interests of applicants and minimising delays in granting of the later application. However, neither Europe nor the UK require that the subject matter of the earlier application be capable of forming a valid notional claim in order for a lack of whole of contents novelty to be made out, which was a feature of the preceding prior claiming approach and is arguably a necessary component of a double patenting-style assessment.
As previously discussed, there is no clear justification for the inclusion of PCT applications that do not enter national/regional phase in the prior art base for whole of contents novelty in a particular jurisdiction. Once the national phase deadline has expired, such applications will lose their potential to conflict, and by the time the later application is examined it will be possible to determine whether an earlier filed PCT application had entered national phase in that jurisdiction.
Unless or until the legislation is amended, Australia and New Zealand appear to be stuck with a broader than necessary approach to the "whole of contents" novelty assessment of double patenting. The AU Act as currently drafted could also be open to an interpretation that permits an applicant of a withdrawn PCT application to "publish" the specification at a later date in an attempt to invalidate a claim to a similar invention in a later filed application.
Footnotes
1. M. Caine, "The Problem with Secret Prior Art", https://dcc.com/wp-content/uploads/2018/02/Article-The-problem-with-secret-prior-art.pdf
2. Patents Act 1990 (Cth), s 18(1)(b)(i) and Schedule 1
3. Patents Act 1990 (Cth), s 24(1)(a); Cytec Industries Inc. v Nalco Company [2021] FCA 970
4. EI du Pont de Nemours Co v ICI Chemicals & Polymers Ltd [2005] FCA 892, 66 IPR 462; Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209
5. Patents Act 1990 (Cth), s 29A and Schedule 1
6. Patents Act 2013, ss 8(2) and 14(b)(i)
7. Patents Act 2013, s 46
8. Patents Act 2013, s 5(1)
9. EPC, Art 54(3)
10. EPC Art 153(5)
11. Patents Act 1977, s 2(3)
12. Patents Act 1977, s 89B
13. Patents Regulations 1991 (Cth), reg 4.4; Patents Act 2013, s 79
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