8.4.5.1 Publication Considerations

For an objection based on "whole of contents" to apply, examiners must be satisfied that:

• the citation is a published (i.e. OPI) Australian complete specification, including a PCT application which has designated Australia, at the time it is being considered (see 2.4.11.7 Citation Not OPI and 2.4.11.6 Citation an International Application under the PCT);
• publication must have occurred after the priority date of the claim under consideration;
• the relevant information referred to must have been contained in the specification on its date of publication; and
• the relevant information referred to must have been contained in the specification when it was filed.

All of these conditions must be satisfied before an objection based on "whole of contents" can be taken.

If the above conditions are satisfied, the ongoing status of the citation is not relevant, i.e. the objection applies even if the citation has lapsed, or the relevant material in the citation has been amended.

There is also no requirement in the Act that the cited application be in force at the date of publication. Thus, if an application is published, despite being lapsed, refused or withdrawn before the publication date, it may still constitute prior art for the purpose of "whole of contents". In this regard, the UK decision in Woolard's Application [2002] RPC 39 and the official practice expressed in Guidelines for Examination in the EPO, Part C, Chapter IV are not considered determinative of the position in Australia.