Australia’s “grace period” provisions allow a patent applicant to disclose or use their invention within 12 months before filing a complete patent application in Australia. In an interesting interpretation of those provisions, the Australian Patent Office has found that the grace period applies to whole of contents citations published after a patent application has been filed.

Background

Australian practitioners will be familiar with the decision in Biogen Idec MA Inc. [2014] APO 25 (Biogen), which confirmed that Australia’s grace period provisions extend to so called “whole of contents” citations, ie, Australian patent applications having an earlier priority date but a later publication date than the priority date of the claim under consideration. However, Biogen only addressed this issue insofar as it relates to a whole of contents citation published before the filing date of the complete patent application.

In Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61 (Rozenberg), the Patent Office considered whether Australia’s grace period provisions also extend to whole of contents citations published after the filing date of a complete patent application.

The decision

The pertinent regulations that were considered in Rozenberg are those which prescribe the circumstances under which a disclosure may be disregarded from considerations of novelty and inventive step (reg 2.2(1A)), and those which prescribe the period within which a patent application must be filed in order to avail of the grace period (reg 2.3(1A)).

Regulation 2.2(1A) of the relevant Patent Regulations provides that the grace period will apply in “the circumstance 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“.

At first blush, these regulations may appear to set a time limit which requires the relevant disclosure to be made within a 12 month window preceding the filing date of the complete application. However, the Delegate in Rozenberg interpreted regulation 2.2(1A) as setting a start date but not a final date by which the relevant disclosure must be made (at [186]). On that interpretation, the whole of contents citation was captured by the regulation, even though it was published after the filing date of the disputed application.

Similarly, the Delegate considered that regulation 2.3(1A) sets a final deadline by which an application must be filed, but does not set a start date (at [187]). On that interpretation, the filing of the disputed application was captured by the regulation, even though it was filed before the whole of contents citation was published.

Conclusion

Whether or not this decision stretches the bounds of Australia’s grace period provisions, it addresses a potential irrationality that lingered following Biogen. Although Biogen clarified the availability of whole of contents citations to Australia’s grace period provisions, it remained an open question as to whether a patent applicant could be barred from availing of those provisions to avoid a whole of contents citation because the applicant had filed their application too early. For now at least, that issue appears to be settled. However, it remains to be seen whether this decision will be appealed.