Grace period and 'whole of contents' novelty issue

Issue summary

Section 24 of the Patents Act allows applicants who have publicly disclosed their invention a period of up to 12 months in which to file a patent. These so called ‘grace period’ provisions mean that the applicant’s own prior art must be disregarded for novelty and inventive step, if it is published within the period up to 12 months before the filing date.

In Australia there is also ‘whole of contents’ novelty. A ‘whole of contents’ novelty objection is an objection based on information disclosed in a published Australian complete specification or a Patent Cooperation Treaty (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.

Recent hearings decisions found that the grace period provisions can be used to overcome ‘whole of contents’ novelty objections based on the applicant’s own prior art patent applications (‘self-whole-of-contents’ applications).

Concerns have been raised that use of the ‘grace period’ provision to avoid a self-whole-of-contents novelty objection effectively allows a 21-year monopoly and double patenting on the register of patents.

A review of the provisions has been suggested.

Comments