Complete patent applications that have not been published before the priority date of a patent application, but that have an earlier priority date, may be available for use as prior art against an application. The manner in which such unpublished prior art can be used varies from jurisdiction to jurisdiction.
When the unpublished prior art originates or is derived from the applicant or inventors of the application there may be applicable prior art exemptions, depending on the jurisdiction. We present a summary of the relevant legislation in Australia and New Zealand.
In Australia, a “whole of contents” novelty objection may be raised against a complete patent application in the case where prior art falls within the aspect of the “prior art base” set out in subparagraph (b)(ii) in Schedule 1 of the Australian Patents Act (1990):
information contained in a published specification filed in respect of a complete application where:
- (a) 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
- (b) the specification was published on or after the priority date of the claim under consideration; and
- (c) the information was contained in the specification on its filing date.
Where prior art meets these criteria it can only be used against the application for the purpose of a novelty objection, but cannot support an inventive step objection.
In the event that the applicant’s own application is raised as a whole of contents citation, the following grace period provisions of Section 24(1) of the Australian Patents Act (1990) may be applicable.
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:
- (a) any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
- (b) 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 complete application for the invention is made within the prescribed period.
The “prescribed period” is defined in Regulation 2.2C(3) as 12 months from the day the information was made publically available.
Therefore, provided the publication date of the earlier application from or derived from the applicant falls within the 12 month period prior to the filing date of the later application, it can be excluded from the prior art base. In the case where the later application is a divisional application, the filing date (for the purposes of Section 24(1)) is taken to be the filing date of the corresponding parent application (see Section 126.96.36.199.3 of the Australian Patent Manual of Practice and Procedure).
New Zealand - 2013 Act
In New Zealand, for cases under the 2013 Act (with filing date on or after 13 September 2014), a similar novelty only objection may be raised against unpublished prior art that meets the prior art base criteria in section 8(2) of the New Zealand Patents Act (2013) as follows:
For the purpose of deciding whether or not an invention is novel, the prior art base, in relation to an invention so far as claimed in a claim, also includes the information contained in a complete specification filed in respect of another patent application if all of the following circumstances apply:
- (a) 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
- (b) that complete specification became open to public inspection after the priority date of the claim under consideration; and
- (c) the information was contained in that complete specification on its filing date and when it became open to public inspection.
Therefore prior art with an earlier priority date, but published after the priority date of the application can only be used against the application for the purpose of a novelty objection, but cannot support an inventive step objection.
Unlike Australia, New Zealand only has limited disclosure grace period provisions. These are not applicable in the case of prior art patent applications. Therefore regardless of whether the earlier application is from or derived from the applicant, it is considered part of the prior art for assessment of novelty.
New Zealand - 1953 Act
In cases under the 1953 New Zealand Act (with filing date before 13 September 2014, or divisional applications of such cases), the issue of unpublished prior art is covered in Section 14(1), which states:
(1) In addition to the investigation required by section 13, the examiner shall make investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed—
- (a) in pursuance of an application for a patent made in New Zealand and dated before that date; or
- (b) in pursuance of a convention application founded upon an application for protection made in a convention country before that date.
Therefore even if the earlier unpublished application discloses the claimed invention of the application in its description, provided it does not actually claim the matter it is not part of the prior art base. If instead the earlier application does claim the same matter as the application, it could be raised as a “prior claiming” objection against the later application.
The issue of unpublished prior art can be complex when prosecuting an application in multiple jurisdictions with different unpublished prior art assessment criteria and exclusion provisions, particularly if your invention is in a competitive area that could be crowded with unpublished prior art, or if you have unpublished applications that could create issues for your later filed invention.