In two separate decisions, IP Australia has taken the stance that the grace period can be used to remove from consideration for novelty a patent application published after the filing date of the application under consideration, despite the patent application having an earlier priority date. However, this stance does not sit well with the wording of the relevant legislation and has not yet been confirmed as correct by an Australian court.
Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61
The patent application under consideration, Australian Patent Application No. 2010294197 owned by Velin-Pharma A/S ("the '197 application"), had a filing date of 10 September 2010 and a priority date of 10 September 2009. The commonly owned cited patent application published as WO 2010/118979 A1 ("D13") designated Australia and is considered to represent an Australian application. D13 had an earliest priority date of 7 April 2009, a filing date of 7 April 2010 and a publication date of 21 October 2010. Notably, the publication of D13 occurred after the filing date of the '197 application.
D13 was cited in a "whole of contents" novelty objection, which is a novelty objection based on information disclosed in a published Australian patent application or a 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, but where the application was published after the priority date of the claim under consideration.
The IP Australia Delegate considered whether D13 could be disregarded using the grace period provisions of subsection 24(1)(a) of the Patents Act 1990 (Cth). This subsection provides that any information made publicly available through publication or use of the invention in "prescribed circumstances" by or with the consent of the nominated person or patentee must be disregarded for the assessment of novelty, inventive step or innovative step if a patent application is made within the prescribed period. According to subregulation 2.2(1A) of the Patents Regulations 1991 (Cth), the "prescribed circumstances" are that "there was a publication or use of the invention within 12 months before the filing date of the complete application" [emphasis added]. The prescribed period for making the patent application is defined in subregulation 2.3(1A) as "the period of 12 months after the information was first made publicly available" [emphasis added].
The Delegate considered the wording of subregulation 2.2(1A) and took the view that subregulation 2.2(1A) does not set a final date for the period during which the publication or use occurred, but merely requires the period to start 12 months before the filing date. In forming this view the Delegate appears to have ignored the requirement in subregulation 2.2(1A) for the publication to have occurred "within 12 months before the filing date of the complete application". As D13 was published on 21 October 2010, which was after the date the period commenced (on 10 September 2009), the Delegate considered that the requirements of subregulation 2.2(1A) were met. In relation to subregulation 2.3(1A), the Delegate found that the prescribed period for filing the patent application ends "after" the publication date, but that a start date for the prescribed period is not specified. In arriving at this view, the Delegate appears to have ignored the requirement of subregulation 2.3(1A) that the application should be made in "the period of 12 months after the information was first made publicly available". On this basis, the Delegate found that the filing date of the '197 application of 10 September 2010 satisfied the requirements of subregulation 2.3(1A), despite being earlier than the publication date of D13. The Delegate concluded that the grace period provisions applied and D13 was to be disregarded for the assessment of novelty of the claims of the '197 application.
CNH Industrial Italia S.p.A. [2020] APO 16
In this decision, the Deputy Commissioner of Patents considered whether an unauthorised disclosure in the form of a patent application published after the filing date of the patent application under consideration could be disregarded using the grace period provisions of subsection 24(1)(b) of the Patents Act 1990 (Cth). Australian Patent Application No. 2015286813 filed by CNH Industrial Italia S.p.A. ("the '813 application") had a filing date of 7 July 2015 and a priority date of 9 July 2014. The cited patent application published as WO 2015/159248 A1 ("the '248 citation") designated Australia and is considered to represent an Australian application. The '248 citation was owned by Denso Thermal Systems S.p.A., had a priority date of 16 April 2014, a filing date of 16 April 2015 and a publication date of 22 October 2015. Again, the '248 citation was published after the filing date of the '813 application.
The Deputy Commissioner found that the information in the '248 citation was derived from CNH Industrial Italia S.p.A. and made publicly available without their consent. On this basis, the relevant grace period provision is subsection 24(1)(b) of the Patents Act 1990 (Cth) which provides that any information made publicly available without the consent of the nominated person or patentee through publication or use of the invention by another person who derived the information from the nominated person or patentee must be disregarded for the assessment of novelty, inventive step or innovative step if a patent application is made within the prescribed period. At the relevant time, the prescribed period for making the patent application was defined in regulation 2.2D of the Patents Regulations 1991 (Cth) as "12 months from the day the information was made publicly available".
The Deputy Commissioner referred to the decision in Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61, and concurred with the Delegate's reasoning that the grace period applies to a later published patent application with an earlier priority date. Accordingly, the Deputy Commissioner found that the grace period applied in the circumstances, and that the '248 citation should be disregarded for the assessment of novelty of the claims of the '813 application.
Comments
Following these two decisions, it appears that IP Australia has taken the stance that a patent application published after the filing date of the application under consideration satisfies the grace period provisions of the Patents Act 1990 (Cth), even when the patent application has an earlier priority date than the application under consideration. Indeed, the Australian Patent Office Manual of Practice and Procedure has been updated to clarify that the information made publicly available in the grace period provisions includes "information published in a 'whole of contents' citation irrespective of whether the citation was published before or after the filing date of the application" (Part 2.4.4.6.3 and 2.4.4.6.3A). This position appears to overturn statements made by the previous Deputy Commissioner of Patents in Biogen Idec MA Inc. [2014] APO 25 discussed here, where he outlined specific time frames when the grace period could apply in relation to "whole of contents" novelty objections. He stated that "at best, it can only apply in the limited circumstance where the cited application has an earlier priority date and publication occurs within 12 months before the filing of the complete application under consideration . For example, in the common case where the relevant applications both rely on a full 12 month priority period this means that subsection 24(1)(b) could only operate where there is a 6 to 18 month difference in priority dates." The Deputy Commissioner goes on to state that the difference in priority dates must fall within the range of 18 to 30 months where the relevant application does not claim priority from another application.
Regardless, the two separate decisions in Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61 and CNH Industrial Italia S.p.A. [2020] APO 16 confirm that the grace period may be used to disregard patent applications published after the filing date of a patent application under consideration for the assessment of novelty before IP Australia. As this position is yet to be confirmed as correct by an Australian court, we recommend exercising caution when relying on the grace period provisions if these particular circumstances apply.
Originally published 15th April 2020
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