Biogen Idec MA Inc.  APO 25
In a recent decision of the Deputy Commissioner of Patents, the grace period provisions of section 24 were successfully relied upon to overcome a "whole of contents" novelty objection based on an earlier published patent application containing information derived from the applicant. This decision confirms that the grace period may be used to overcome a "whole of contents" novelty objection where the cited application is filed by the same applicant, or contains information derived from the applicant, and published in the 12 months preceding the Australian filing date of the application under consideration.
Section 24 of the Patents Act 1990 outlines the grace period provisions. At the relevant time, subsection 24(1) provided:
- For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:
- any information made publicly available, through any publication or use of the invention in the prescribed circumstance, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
- any information made publicly available without the 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 patentee;
but only if a patent application for the invention is made within the prescribed period."
According to subregulation 2.3(2), the prescribed period is 12 months from the day when the information became publicly available.
A "whole of contents" novelty objection is a novelty 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.
According to the Australian Patent Office Manual of Practice and Procedure at part 126.96.36.199.3 (as it read at the time of the decision) the grace period could not be relied upon to overcome a "whole of contents" novelty objection.
Facts of the Case
Biogen Idec MA Inc. (Biogen) filed a divisional application on 25 October 2012 from a parent application with a filing date of 17 February 2006 and a priority date of 17 February 2005. During examination of the divisional application, the Examiner found that the application was not novel in light of WO 2005/080972 (PCT/EP2005/001921) filed by Axaron Bioscience AG (Axaron) with a publication date of 1 September 2005. The Axaron application had a priority date of 23 February 2004, which was earlier than that of the Biogen application. The objection was raised as a "whole of contents" novelty objection because, while the Axaron application had an earlier priority date, it was published after the priority date of the Biogen application.
Biogen responded by arguing that the grace period provision (subsection 24(1)(b)) applied to remove the disclosure as prior art as the relevant information in the cited application (PCT/EP2005/001921) was sourced from Biogen. Biogen claimed that the requirements of subsection 24(1)(b) were met as the Biogen application was filed within 12 months of the publication of WO 2005/080972, and the relevant information was filed and published without their consent. Biogen supported this claim by referring to German court proceedings in which the relevant information contained in PCT/EP2005/001921 was found to be sourced from Biogen, resulting in the corresponding European patent (EP1721157) being granted in the name of both SYGNIS Bioscience GmbH & Co KG and Biogen.
The Deputy Commissioner of Patents accepted, based on the evidence, that the information in WO 2005/080972 that was relevant to the novelty objection was derived from Biogen and that Biogen did not consent to the filing or publication of that information. The Deputy Commissioner also found that subsection 24(1)(b) applied to the information disclosed in WO 2005/080972 and that the information was to be disregarded for determining the novelty of the Biogen invention.
While this decision relates to the prior art effect of an earlier application filed by a third party containing information derived from the applicant and published without the applicant's consent, it follows from the Deputy Commissioner's analysis that the grace period would also apply in circumstances where the earlier Australian complete specification or PCT application representing the "whole of contents" citation is filed by or with the consent of the applicant.
However, when relying on the grace period to remove the prior art effect of an inadvertent earlier filing, the timing of filing the later application is important. Based on this decision, the grace period provisions may be used in relation to a "whole of contents" novelty objection where the filing date of the later application occurs after, but within 12 months of, publication of the earlier application. Where both applications rely on the full 12 month priority period, there could be a 6 to 18 month difference in priority dates between the two applications.
The Deputy Commissioner also made the following interesting observation in relation to the application of the grace period where priority is not claimed:
Where the application filed for subsection 24(1) does not claim priority from another application the difference in priority dates must fall within a range of 18 to 30 months."
It follows that where the later application does not claim priority, it may be filed up to 30 months after the priority date of the earlier application and the grace period will apply, provided the applicants of both earlier and later applications are the same and the later application was filed after but within 12 months of publication of the earlier application. This will include circumstances where the earlier application is published prior to the filing date of the later application, and where a regular novelty objection, rather than a a "whole of contents" novelty objection, would otherwise apply.
After the outcome of this case, the Australian Patent Office Manual of Practice and Procedure was updated to clarify that the grace period may apply where the information made publicly available is published in a “whole of contents” citation.