Basis of the "Whole of Contents" Objection

Date Published

Note: The information in this part only applies to:

•  standard patent applications with an examination request filed on or after 15 April 2013.
•  innovation patents with an examination request filed on or after 15 April 2013.
•  innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent.  

For all other standard patent applications/innovation patents, see Basis of the "Whole of Contents" Objection.

In this topic:

The basis of the "whole of contents" objection exists in the definition of the "prior art base" in schedule 1.  Thus, for the purpose of assessing novelty, the prior art base includes:

"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."

‘P’ and ‘E’ category patent documents can therefore be considered for “whole of contents” novelty purposes (see PCT/GL/ISPE/2 paragraphs 16.65 and 16.67 for information on citation categories).

Examination Practice

Provided a document satisfies the three criteria above, it can be considered for the purpose of lack of novelty. The considerations for such a novelty objection are otherwise exactly the same as for documents published before the priority date of the claim under examination.  Where a “whole of contents” objection is taken, it should explain why the cited document is relevant for novelty purposes (see, for example, PERP code [F25A]).

Where the issue of "whole of contents" novelty arises in relation to a "selection" case, examiners should refer to General Disclosures, Selections.

Relevant Case Law

The Federal Court considered "whole of contents" novelty in EI du Pont de Nemours Co v ICI Chemicals & Polymers Ltd [2005] FCA 892, 66 IPR 462 and Danisco A/S v Novozymes A/S (No 2) [2011] FCA 282; 91 IPR 209.  In both cases the court asked two questions:

i. was there any information in the citation that anticipated the application; and

ii. whether that information was the subject of a claim, or could be the subject of a valid notional claim.

It is not necessary to formulate a notional claim in order to raise a "whole of contents" novelty objection.  Any information that is sufficiently disclosed to support a lack of novelty is sufficiently disclosed to serve as the basis of a valid claim.