Australian patent law provides applicants with a ‘grace period’ in certain circumstances permitting disclosure of an invention prior to filing a patent application, provided a complete application is filed within 12 months of the disclosure. Recent decisions from the Australian Patent Office have held that this grace period applies to whole of contents disclosures filed prior to but published after the patent application has been filed.
In Rozenberg & Co Pty Ltd v Velin-Pharma A/S [2017] APO 61 (Rozenberg), the Patent Office considered the relevant regulations that prescribe the circumstances under which disclosure may be disregarded for the purposes of novelty and inventive step and the time frame in which an applicant must file the application.
Regulation 2.2(1A) provides that the grace period will apply in the circumstances that there was a publication or use of the invention within 12 months before the filing date of the complete application.
Regulation 2.3(1A) provides that the prescribed period for filing a complete application is the period of 12 months after the information was first made publicly available.
It would appear that for the grace period to apply, the relevant citation must have been published before the filing of the patent application under consideration. However, the Patent Office interpreted Regulation 2.2(1A) as a start date for the prescribed circumstances of the Act but not an end date for the prescribed period. As the publication occurred after the filing date of the application, it was considered to meet the prescribed circumstances in accordance with Regulation 2.2(1A). The Patent Office then interpreted Regulation 2.3(1A) as a final deadline by which the complete application must be filed without providing a start date.
Rozenberg was decided prior to the Raising the Bar amendments which came into effect on 15 April 2013. Under the current provisions, the Regulations no longer provide a specific date or time period, specifying that a prescribed circumstance is any self-disclosure that is not covered by a separate regulation. However, the Rozenberg decision has been followed by a decision under the new provisions in CNH Industrial Italia S.p.A. [2020] APO 16 (CNH). In CNH, the Patent Office was considered to be bound by the decision in Rozenberg, even post Raising the Bar and the information in the whole of contents citation was disregarded when considering novelty.
Following these decisions, it appears that the Patent Office has pushed the boundaries of the grace period provisions beyond their original intention. However, they have identified this as a potential issue for resolution. Until such time or until there is a judicial decision, patent applicants may be able to rely on the provisions of the grace period to have certain whole of contents prior art disregarded.