official notice

decision of a DEPUTY commissioner of patents

Application	:	No. 26029/92 in the name of ALCATEL NV

Title	:	Low-Orbit Satellite Communication System

Action	:	Objection during examination based on "whole of contents" lack of novelty.

Decision	:	Issued             .  

A novelty objection under the 1952 Act required the citation to have been published before the priority date.

While the 1990 Act continues novelty as a ground of objection, the elements of that ground have changed from the 1952 Act.

The criteria to determine which documents a novelty objection can be applied to, is an element of the novelty objection.

It is no answer to a "whole of contents" objection that the citation was not published before the priority date, as the elements of the novelty objection have been enlarged by s.7(1)(c) to include such documents.

patents act 1990

decision of a DEPUTY commissioner of patents

Re:	Patent Application No. 26029/92 by ALCATEL NV, and an objection during examination.
background
Patent application 26029/92 was filed on 29 Sept. 1992 as a Convention application claiming priority from French application 9112119 dated 2 October 1991. As the application was filed after the commencement of the Patents Act 1990, it is not subject to any of the transitional provisions in the Act.

The first examination report issued on 23 March 1994. The second objection was to the effect that the majority of claims were not novel, having regard to the applicant's prior application 17137/92. The objection taken is colloquially known as a "whole of contents" novelty objection. I note that the citation was filed on 25 May 1992, claiming Convention priority from French application 9106591 dated 31 May 1991; it was published on 3 Dec. 1992. 

The applicant responded with amendments that dealt with another objection, and submitted:

"An invention can only be deprived of novelty by a document if the document is published before the priority date of the specification whose invention is being tested for novelty. The documents in the "whole of contents" provision by definition are not published before the priority date of the claimed invention. Thus they lack the essential characteristic to enable them to deprive the claimed invention novelty."

The "whole of contents" objection was maintained, and in response the applicant requested to be heard. The hearing was held in Sydney on 10 March 1994, and related solely to the statutory basis for taking the objection when the citation was not publicly available at the priority date; it did not deal with the merits of the objection in the context of the respective disclosures.
Submissions
The basic submission put by the applicant is quite straightforward. They say:

-	the Patents Act 1990 refers to the ground of objection of novelty. There is nothing in the Act suggestive that the nature of that ground has changed from that under the 1952 Act, or indeed from prior to that Act;

-	an inherent component of a novelty objection is that the citation must have been published before the priority date; reference was made to a number of authorities relating novelty to a 'prior publication', and particularly to Sunbeam Corp & another v Morphy-Richards (Australia) P/L (1961) 35 ALR 212 where Windeyer J stated:

A description in an obscure publication would suffice to destroy novelty, provided it was a publication, that is to say that the document ... had been available to the public.

-	Section 7(1) deems an invention to be novel unless it is not novel when compared to certain types of information;

-	7(1)(c) refers specifically to material that was not published at the priority date. But because the Act has used novelty as the relevant test, such material can never satisfy the novelty criteria. That is, although there was an intention to implement a "whole of contents" objection to replace the objection of "prior claim", the reliance upon the ground of novelty has negated any such intention.
Discussion
This matter raises a short point in the interpretation of the Patents Act 1990; and in particular whether the objection of lack of novelty has changed from that under the 1952 Act.

In the absence of anything to the contrary, it would be reasonable to expect that the ground of novelty under the 1990 Act was the same as under the 1952 Act. If in fact that was the case, I would agree with the applicant that a "whole of contents" objection under the heading of novelty would not exist - under the 1952 Act and previously, it was a requirement of the novelty objection that the citation be published in Australia before the priority date.

However, the present matter requires an understanding of grounds of objection, with particular reference to the ground of novelty. This issue was considered in NV Philips v Mirabella (24 IPR 1 at page 10) where Wilcox J stated:

The factual material on which an objection of novelty may be based is different under the 1990 Act than under the 1952 Act. For standard patents, it has been broadened from information published in Australia at the priority date of the claim to information publicly available anywhere in the world. Obviousness is affected by the expansion, however theoretically, of the defined "patent area": compare ss.18 and 7(2) of the 1990 Act with s.100(1)(e) of the 1952 Act. It seems to me unlikely that the Parliament intended to protect 1952 Act patent-holders from challenge on these grounds. Once again, there is nothing in the legislative history to so suggest. I do not think that the mere fact that the 1990 Act changed the elements of a particular ground of revocation, or the evidence needed to make it good, means that this ground is now unavailable against a 1952 Act patent. 

This distinction between a ground of objection, and an element of a ground, is also made by Lockhart J (Northrop J and Burchett J concurring) in NV Philips v Mirabella (26 IPR 513). In discussing the intent of s.233(4) he states (on page 527):

"... but with this important qualification, namely, that the elements of each ground of revocation under the 1990 Act apply only to the extent that they replicate in substance the elements that previously constituted a ground of revocation under the 1952 Act. Hence, if a ground of revocation under the 1990 Act omits an element which was a necessary part of a ground under the 1952 Act, the patentee has the benefit of it. On the other hand, if a ground under the 1990 Act contains an element not previously present under the 1952 Act, it cannot apply in aid of revocation of the 1952 Act patent. In short, a 1952 Act patentee is not to be worse off than he would have been if the 1952 Act had continued to operate, but he may be better off if the 1990 Act treats a former ground of revocation as being no longer necessary."

That is, the courts recognise a difference between a ground of objection, and the factual material on which the objection is based. In the context of novelty, I would see that difference as being between the criteria that one applies to the factual evidence (such as the 'reverse infringement' test), and the criteria for determining whether specified art is relevant factual material (such as whether the art was published before a certain date). The courts also recognise that the factual material on which a novelty objection may be based has changed with the 1990 Act. 

This interpretation of grounds, and elements of grounds, provides a meaningful construction to the Act with no apparent anomalies. On the other hand, if I consider the provisions of the Act in the context of novelty under the 1990 Act having the same elements as under the 1952 Act, I see the following anomalies:

-	as was argued by the applicant in the present case, subpara. 7(1)(c) of the Act has no meaningful purpose - the specified prior art (by definition) is not published before the priority date and thus could never give rise to a novelty objection. Likewise, subpara (b)(ii) of the definition of the "prior art base" in Schedule 1 has no meaningful purpose;

-	the operation of s.234(5) together with the saving of part V of the 1952 Act (s.234(3)) would mean that for transitional applications the objection of "prior claim" could be taken in opposition proceedings, but a corresponding "whole of contents" objection (limited to the prior claim facts) could not be taken either during prosecution or after grant.

-	thirdly, under the 1952 Act (and previously), citations had to be published in Australia before the priority date in order to give rise to a novelty objection. Subpara (b)(i) of the definition of the "prior art base" in Schedule 1 incorporates ALL subparagraphs of subpara (a) of that definition, including (a)(iii) which refers to information made publicly available outside the patent area. This inclusion is contradictory to publication in Australia being an element of novelty.

Furthermore, the applicant acknowledged that it was the intention to replace "prior claiming" with "whole of contents". This follows from recommendation 14 of the IPAC report Patents, Innovation and Competition in Australia:

We recommend that prior claiming by earlier unpublished patent specifications be abolished as a ground of objection of invalidity for both standard and petty patents and replaced by a "whole of contents" approach in determining novelty but not obviousness.

This recommendation was accepted by the Government in its response to the IPAC report, where it said:

Accepted. The change from "prior claiming" to "whole of contents", by avoiding the confusing body of case law on prior claiming, will provide a simpler mechanism for the resolution of conflicts between copending applications.

Subsequently, the explanatory memorandum to the 1990 Bill states (in para 2):

The Bill implements the Government's response to the [IPAC report]... Apart from improvements on a variety of administrative matters ... the Bill implements a number of policy measures. Notably, the Bill strengthens the standards of patentability for standard patents by testing inventions for novelty and inventive step against prior disclosures in recorded form anywhere in the world rather than just in Australia. Other policy changes were also outlined in the Government's response to IPAC's report.

which clearly indicates an intention to change the material against which the novelty test is to be applied under the 1990 Act.
Decision
On the interpretation pressed by the applicant, the replacement of the prior claim objection by a "whole of contents" objection would be wholly ineffective. On the other hand, if the criteria for determining which documents a novelty objection is to be applied is an 'element' of that ground of objection, the 1990 Act has changed the elements such that certain documents published after the priority date are available. 

Having regard to:

-	the intention behind the Act; and 

-	the anomalies in the Act that would otherwise arise the criteria for determining the documents to which the novelty objection applied were inherent in the novelty objection and thus carried forward from the 1952 Act,

it is apparent that Parliament considered the documents to which a novelty objection could be applied to be an element of that ground, and not an immutable component.

The full court in NV Philips v Mirabella (supra) clearly indicated that the 1990 Act has changed the elements of grounds of objection. In the court below, Wilcox J stated that the factual basis on which the objection of novelty may be based has been broadened by the 1990 Act. This finding necessarily requires the criteria for determining whether a particular document can be used as a basis for a novelty objection, to be an element of the ground of a novelty objection - not an immutable component of that objection.

I do not consider the comments of Windeyer J in Sunbeam Corp & another v Morphy-Richards (Australia) P/L (supra) to be contrary to this conclusion. In my view those comments merely reflect those elements of the novelty objection as they existed at that time.

I therefore find the novelty objection raised in examination has a statutory basis - and (in the absence of discussion of the merits of the objection having regard to the technical facts) properly taken.
Conclusion
The final date for acceptance of the application is 23 Dec. 1995. On the material before me and the nature of this decision, it is inappropriate for me to refuse the application at this time. Rather I allow the applicant to continue prosecuting the application in the normal manner within the time remaining to gain acceptance. 

D Herald
Deputy Commissioner of Patents