Mosaics and Related Documents

Date Published

Subsection 7(1)(b) provides that for novelty (other than for "whole of contents"), prior art information made publicly available in 2 or more related documents, or through doing 2 or more related acts, can be used, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of that information.

Some guidance on when 2 or more documents constitute a single source of information is provided in Nicaro Holdings Pty Ltd v Martin Engineering Co 16 IPR 545 at page 570 where Gummow J stated:

"What degree of lack of connection between two or more documents will make them 'independent' and so forbid the making of a mosaic to destroy novelty, will be very much a question in the particular case. Much will depend upon the nature of the art in which the skilled addressee is to be treated as versed at the priority date; this appears to have been important in the Sharpe & Dohme case*. Plainly, the degree of connection which is stated to exist in the documents themselves will be important. It is difficult to see how mere identification of prior patents as related or prior art would bring them sufficiently closely together for the purpose under consideration here. Again, even where there is a further description of the prior publication, it may nevertheless be that the purpose of the reference is to direct the reader away from it, as disclosing something outmoded or defective. On the other end of the scale, the terms of the specification of the patent in suit in the Sharpe & Dohme case* indicated that the patentees themselves had been relying upon the prior publications in question; and the publications themselves formed what Astbury J called 'one consistent whole'."

* (1927) 44 RPC 367; (1928) 45 RPC 153.

A single document may incorporate several distinct embodiments or disclosures. The above principles apply when deciding whether or not the features of one embodiment can be considered with the features of another embodiment as a single source of information.

Thus, the fact that an earlier patent describes some of the integers of a combination, and refers to other patents which describe the remainder of the integers, does not destroy the novelty of the combination, unless there is a real link between the various earlier patents, as opposed to a mere reference (see Martin Engineering Co v Trison Holdings (1989) 14 IPR 330).

When considering inventive step, examiners must determine whether a claim contains an "inventive step" in relation to the prior art base. For applications filed from 1 April 2002, it is appropriate to “mosaic” two or more pieces of information together if the person skilled in the art would have considered it reasonable to have combined the information to solve the problem (see Prior Art Information)