The holes in whole of contents

Preventing the grant of multiple patents for the same invention in a jurisdiction is a feature of many patent systems. This is generally achieved by requiring that claims define novel subject matter. Although the test for novelty does vary from jurisdiction to jurisdiction, at the heart of the test is that there must have been a public disclosure of the features of the claim for an invention before the priority date of that claim. Such disclosure may be in the form of a printed or electronic publication, or a public use.

However, how do patent systems deal with a situation where an earlier filed (but yet unpublished) first patent application discloses an invention which is claimed in a later filed patent application? As outlined above, the first application cannot be a novelty citation against the second application. Or can it?

Whole of contents novelty

In fact, the earlier filed first application may be considered a novelty citation only, under the concept of “whole of contents”. A number of jurisdictions include a requirement that a claimed invention must be novel over a patent application having an earlier priority date but which was unpublished at the priority date of the claimed invention.

Since whole of contents is a double patenting preventative, unlike the more general concept of novelty, only patent applications filed in a jurisdiction are citable against a later filed patent application in that jurisdiction.

However, as with the more general test for novelty, the application of whole of contents does vary from jurisdiction to jurisdiction. In some cases, this variation creates “holes”, for example, certain categories of patent applications not being citable. Thus benefiting second applicants. In other cases, patent applications for which patents will not be granted become citable. Thus restricting or preventing the grant of a patent for a second applicant.

Australia, New Zealand and Singapore

To map out how whole of contents varies, we have selected these jurisdictions as examples for analysis.

Australia

The whole of contents novelty requirement is defined in the Australian Patents Act 1990 “prior art base” as follows:

Prior art base means

(b) in relation to deciding whether an invention is or is not novel:

(i)….

(ii) 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.

An overseas or Australian provisional patent application by itself is not citable unless it is accompanied by a published complete application, which includes PCT applications designating Australia even if it does not enter the Australian national phase. This is because a PCT application is treated as a complete Australian patent application.

Inclusion of PCT applications is to be contrasted with the approach in Europe for which such applications must have entered the European regional phase in order to be citable for whole of contents novelty.

It must also be appreciated that Australia has a “grace period”. The purpose of the grace period is to maintain validity in the face of self-disclosure. Provided a complete application is filed within one year of the self-disclosure, the grace period will apply. Grace periods for self-disclosures are intended to cover public disclosures, although it has been considered by IP Australia (but not the courts) to extend to ‘self-whole-of-contents’ prior patent filings that are later published (Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61). Such a situation does not arise in Europe as there is no grace period.

New Zealand – 2013 Act

The whole of contents novelty requirement is defined in the New Zealand “New” Patents Act 2013 “prior art base” as follows:

8. Meaning of prior art base

(1)…

(2) 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.

Similar to Australia, a provisional patent application by itself is not citable unless it is accompanied by a published complete application, which includes PCT applications designating New Zealand even if it does not enter the New Zealand national phase. This is because a PCT application is treated as a complete specification in New Zealand.

New Zealand recently introduced a grace period for self-disclosures made on or after 30 December 2018, that occur within 12 months of a complete application. These grace period provisions remain untested although it appears unlikely they would extend to cover ‘self-whole-of-contents’ prior patent filings.

New Zealand – 1953 Act

New Zealand applications with an earliest complete filing date before 13 September 2014, including divisional applications filed therefrom are still being examined and granted under the “Old” Patents Act 1953, where unpublished prior art is defined as follows:

14. Search for anticipation by prior claim

(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.

This is referred to as “prior claiming” and is significantly narrower compared with whole of contents novelty. Prior claiming is restricted to granted claims in New Zealand with an earlier priority date, and does not extend to PCT applications unless they entered the national phase in New Zealand.

Further, while the earlier New Zealand application may disclose the claimed invention in the description, it must specifically include a claim to the subject matter, otherwise it is not considered part of the prior art base. A notional claim derived from the specification is not sufficient. Therefore, to be considered as prior art under the “Old” 1953 Act, the earlier New Zealand application must also claim the same matter as claimed in the later filed application.

Singapore

The whole of contents novelty requirement is defined in the Singapore Patents Act “prior art base” as follows:

14. (1) An invention shall be taken to be new if it does not form part of the state of the art.

(2)…

(3) The state of the art in the case of an invention to which an application for a patent or a patent relates shall be taken also to comprise matter contained in an application for another patent which was published on or after the priority date of that invention, if the following conditions are satisfied:

(a) that matter was contained in the application for that other patent both as filed and as published; and

(b) the priority date of that matter is earlier than that of the invention.

In Singapore, an application with an earlier priority date that is later published can provide prior art for novelty of a later filed application. However, the earlier filed application must be a Singapore application and does not extend to PCT applications unless they enter the national phase in Singapore. Matter contained in the earlier filed Singapore application must be present in the application as filed and as published.

Singapore also provides a grace period for self-disclosures, which includes self-disclosures occurring within 12 months of a complete application. These grace period provisions remain untested although it appears unlikely they could extend to ‘self-whole-of-contents’ prior patent filings.

Conclusion

Although the whole of contents law for these jurisdictions derives from European law, in practice, there are significant differences in application. Such differences mandate a careful analysis of any factual situation to ensure an accurate assessment is made rather than assuming that whole of contents is always treated uniformly.