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5.6.5.2 Whole of Contents

Date Published

Key Legislation:

Patents Act:

  • s7(1) Novelty
  • s18(1)(b)(i) Patentable inventions
  • s24 Validity not affected by making information available in certain circumstance
  • s102 What amendments are not allowable?
  • s104 Amendments by applicants and patentees  
  • Schedule 1 Dictionary

Patents Regulations:

  • reg 2.2 Information made publicly available--recognised exhibitions
  • reg 2.2A Information made publicly available--learned societies
  • reg 2.2B Information made publicly available--reasonable trial of invention
  • reg 2.2C Information made publicly available--other circumstances
  • reg 2.2D Information made publicly available without consent--period
  • reg 13.4 Prescribed period: acceptance of request and specification

PCT ISPE Guidelines:

Overview

Normally, a citation needs to be Open to Public Inspection (OPI) before the relevant priority date for a novelty objection.

However, there are certain circumstances where a patent document that was not OPI before the priority date can be used for a novelty objection. This situation is colloquially referred to as "Whole of Contents" novelty.

Requirements for 'Whole of Contents'

The basis of "whole of contents" novelty arises from the definition of "prior art base" in schedule 1 of the Act, as set out below:

"information contained in a published specification filed in respect of a complete application where:

  1. 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

  2. the specification was published on or after the priority date of the claim under consideration; and​​​​​​​

  3. 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. The timelines below illustrate the criteria for ‘P’ and ‘E’ category documents.​​​​​​​

​​​​​​​For further information on citation categories, see PCT/GL/ISPE/12 paragraphs 16.72 -16.73.

In addition to the above criteria, for a citation to be a “whole of contents” citation, it must be:

  • a published (OPI) Australian complete specification, this includes a PCT application which has designated Australia; and

  • a single document that stands on its own without reliance on any documents referred to therein.

If the above criteria are met, the ongoing status of the citation is not relevant. Thus, the novelty objection based on the “whole of contents” citation still applies even if the citation has lapsed, been withdrawn, refused or the relevant material in the citation has been amended.

As the requirements restrict it to complete applications, a provisional specification cannot be used as a citation for a 'whole of contents' objection

Priority Date Considerations

Where the citation does not claim priority from another application, examiners will only need to be satisfied that the filing date of the citation is earlier than the relevant priority date of the application under examination.

Where the citation claims priority and the filing date of the citation is later than the relevant priority date, examiners will in principle have to establish that all the essential features of the claim under consideration are disclosed in the citation and disclosed in the relevant priority document. However, where the determination of priority dates is difficult or time consuming, it is not unreasonable to assume that the citation is entitled to its earliest priority date, with the onus of rebuttal placed upon the applicant or attorney.

Examination Practice

Provided a document satisfies the criteria above, it can be considered for the purpose of a lack of novelty. The considerations for a 'whole of contents' novelty objection are exactly the same as for documents published before the priority date of the claim under examination including the level of disclosure required. A “whole of contents” objection should explain why the cited document is relevant for novelty purposes.

If a PCT application designating Australia is used as a “whole of contents” citation, it should be referred to by its WO publication number.

Citation Not OPI

If a potential citation is not published at the time of examination, but it is likely that publication will take place (for example, the citation is not lapsed or withdrawn), then the report should include a note indicating a potential "whole of contents" objection.

The note will differ depending on who is the nominated person:

  • If the nominated person of the application being examined is the same as that of the citation, the note should also identify the potential citation and indicate that it is not yet OPI.
  • If the nominated persons are different, examiners should not identify the potential citation. The note should simply indicate that an application exists which, when published, would provide the basis for a "whole of contents" novelty objection and when this citation is due to become OPI.

The time for acceptance of an application subjected to a "whole of contents" objection may be extended, where necessary, until 3 months after either the date of publication, lapsing, refusal or the withdrawal of the "whole of contents" citation (whichever is the earliest). In these circumstances, examiners should follow the procedures outlined in 5.6.9.3 Extension of Acceptance period​​​​​​​.

However, acceptance should not be delayed if the publication date or the fact of publication is uncertain.

Citation of a Secret Case

The publication of certain applications ("secret cases") is prohibited. This type of application cannot be used as the basis of a "whole of contents" objection because it is not published. However, if the prohibition order is revoked, a novelty objection may then apply.

In the unlikely event that examiners become aware of a "whole of contents" objection based on a "secret case", they:

  • must not notify the applicant of a potential "whole of contents" objection since it is uncertain whether the application will be published;

  • must not identify the citation to the applicant, as this would be an effective disclosure of the contents of the citation and be contrary to the prohibition order; and

  • should refer the case to the Security Officer for consideration of security issues for both the application and the citation. See 5.6.14 Secret cases and applications involving associated technologies (i.e. nuclear weapons).​​​​​​​

Legal Principles and Relevant Case Law

The Federal Court considered the "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:

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

Amended Reasons

Amended Reason Date Amended

Published for testing
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