Grace Periods and the "Whole of Contents" Doctrine

My colleague, Hedie Meka PhD, has just written an interesting article on recent decisions from the Australian Patent Office dealing with our "grace period" provisions. It appears that the current approach broadens the rights of an applicant to include grace period protection for "whole of contents" citations published after the filing date of the complete application.

The purpose of these grace period provisions is that they allow an applicant to achieve valid patent protection in light of a public disclosure, by the applicant, of the invention before the filing date of a patent application accompanied by a complete specification. The provisions also apply to a public disclosure of the invention without the authority of the applicant.

According to our Patents Act, the contents of a patent application with a priority date earlier than the filing date of an earlier filed patent application can be taken into account when assessing the novelty of an invention defined in that earlier filed a patent application. Clearly, the rationale here is to recognise the priority of the later filed patent application.

It appears that the Australian Patents Office has managed to conflate the whole of contents doctrine with that of the grace period. As Hedie writes, IP Australia has flagged this for an issue to be resolved.


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