2.4.4.6.3A Grace Period

Note: This part only applies to information made publicly available on or after 15 April 2013.  

For information made publicly available before 15 April 2013, see 2.4.4.6.3 Grace Period.

In this topic:

Overview

Overview

Section 24(1) provides that for the purposes of deciding whether an invention is novel or involves an inventive/innovative step, any information made publicly available by, with or without the consent of the nominated person or the patentee, or their predecessor in title (in particular including the inventor), within 12 months before the filing date of a complete application, must be disregarded (see also reg 2.2C). This 12 month period is referred to as the "grace period".

Note: Under the provisions of sec 24(1), the information made publicly available:

•  is not limited to the publication or use of the invention; and

•  includes information published in a “whole of contents” citation irrespective of whether the citation was published before or after the filing date of the application (i.e. it applies to both P, X and E category citations) (see Biogen Idec MA Inc. [2014] APO 25 and Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61).  This approach was also recently affirmed by the Federal Court in Cytec Industries Inc v Nalco Co ​​​​​​​[2021] FCA 970.

Examination Practice

With the possible exception noted below in relation to divisional applications, examiners should not rely on the grace period in the first instance to disregard a publication for novelty or inventive/innovative step purposes, as they will not be aware of all the facts relevant to the case.  However, they should be aware that it may be invoked in rebuttal of such an objection.  In the unusual situation of a private applicant, examiners may draw the applicant’s attention to the existence of sec 24(1) and reg 2.2C in the form of a note in the report.

For divisional applications, if the parent application was filed within 12 months of the date of the relevant disclosure (as per reg 2.2C), the disclosure may also be disregarded for the purpose of considering the novelty and inventive/innovative step of claims of the divisional application entitled to the priority date of the parent (reg 2.3).  Where the applicant has invoked the grace period in relation to a citation with respect to the parent application, it is not necessary to raise the same citation in relation to the divisional application.