Prior claiming in Australia…has news of its demise been greatly exaggerated? Is prior claiming still applicable to the remaining 1952 Act pharmaceutical patents?

by FPA Patent Attorneys

This is one of two related articles on aspects of prior claiming. Our related article concerns the potential application of prior claiming case law to the current concept of “whole of contents” novelty while this article questions the judicial authority suggesting prior claiming is no longer available to challenge patents filed under the 1952 Act.

Prior claiming was a ground of invalidity under the Patents Act 1952 (1952 Act). It prevented grant of a patent claiming subject matter already claimed by another patent. Prior claiming was superseded by the broader concept of “whole of contents” novelty upon commencement of the Patents Act 1990 (1990 Act).

The passage of 23 years since the commencement of the 1990 Act on 30 April 1991 suggests prior claiming should be an historical artefact. While the extinction of patents filed under the 1952 Act is fast approaching, the online database run by the Australian Patents Office (AusPat) shows about 30 1952 Act patents are still in force due to an extension of term. While the number of patents to which prior claiming law could be applied is small, the remaining patents with extensions of term are likely to be of significant value. This is because extensions of term apply to patents protecting registered pharmaceutical products in their final years when the market for the pharmaceutical is usually at its largest. In addition, disputes over pharmaceutical patents often occur in the final few years of their term. In anticipation of the final “prior claiming” disputes, this article looks at the law governing the remaining patents that transitioned from the 1952 Act to be governed by the 1990 Act.

The provisions governing transition to the 1990 Act

Section 234(2) of the 1990 Act provides that the 1990 Act applies to applications filed under the 1952 Act as if they were applications made under the 1990 Act. However, there are some limitations on the application of the 1990 Act to these patents to ensure the patentee of a patent filed under the 1952 Act is not worse off under the 1990 Act than they would have been under the 1952 Act.

The section preserving the patentee’s position is section 234 of the 1990 Act:

(2) Where, before the commencing day:

(a) a patent application had been lodged under the 1952 Act; and

(b) a complete specification…had been lodged under that Act in respect of the application…

then…this Act applies…

(d) in relation to the application as if it were a complete application made under this Act…

(5) Objection cannot be taken to:

(a) an application mentioned in subsection (2); or

(b) a patent granted on such an application;

and such a patent is not invalid, so far as the invention is claimed in any claim, on any ground that would not have been available against the application or patent, as the case may be, under the 1952 Act.

Both the 1990 Act and the 1952 Act have invalidity grounds designed to prevent the grant of a patent for an invention which is the subject of another Australian patent with an earlier priority date. The 1952 Act ground is referred to as “prior claiming” and 1990 Act ground is referred to as “whole of contents” novelty. As outlined above, Section 234(5) of the 1990 Act provides that an application filed before commencement of the 1990 Act is not invalid on any ground that would not have been available under the 1952 Act. Several questions are raised by this provision:

1. Is establishing “prior claiming” enough for invalidity?

2. Is it necessary to establish both a lack of “whole of contents” novelty and “prior claiming” for invalidity?

3. Is lack of “whole of contents” novelty a ground that was available under the 1952 Act? Because, if it was not, it is possible that neither prior claiming nor lack of ‘whole of contents’ novelty are available to invalidate the patent.

How has the case law interpreted the transitional provision?

In the Genetics Institute1 Patent Office decision in 1996 it was stated that ‘…the 1990 Act has replaced the ground of prior claim with the ground of “whole of contents” novelty. However, the transitional provisions of the 1990 Act have the effect of maintaining the objection of prior claim for the present application, and excluding any consideration of “whole of contents”.’ This suggests the answer to 1 above is ‘yes, showing “prior claiming” is enough for invalidity’.

However, by 2000 the Federal Court heard the Emory University case2, which involved a patent applied for under the 1952 Act, granted under the 1990 Act and challenged for lack of novelty for prior claiming. Paragraph 54 states:

…It is well established that in order to establish the invalidity of the Biochem Patent, Emory is confined to the elements of lack of novelty under the 1990 Act to the extent that they formed part of the prior claiming ground under the 1952 Act...

This case suggests, the answer to question 1 above is ‘no’ but the answer to 2 above is ‘yes, it is necessary to show both lack of “whole of contents” novelty and prior claiming for invalidity’. The situation was further complicated in 2002 when the Full Federal Court identified the difficulty with the transition from the 1952 Act to the 1990 Act as follows3:

there is a real question as to whether prior claiming is available as a ground of revocation under the 1990 Act, even in relation to a patent granted under the 1952 Act. Section 138(3) of the 1990 Act provides that the court may revoke a patent, either wholly or in so far as it relates to a claim in one or more of the grounds specified in s 138(3) but on no other ground. There is no equivalent of s 100(1)(f) of the 1952 Act as a ground of revocation in s 138(3). While s 233(4) provides that objection cannot be taken to a patent granted under the 1952 Act, and that such a patent is not invalid on any ground that would not have been available against the patent under the 1952 Act, there is no provision of the 1990 Act that preserves a ground of invalidity under the 1952 Act after its repeal. Accordingly, s 100(1)(f) of the 1952 Act would not be available in this proceeding: see NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 253-4; 117 ALR 79 at 93-4; 26 IPR 513 at 527-8 per Lockhart J.

These comments by the Full Federal Court are obiter dicta. The court had already decided there was no prior claiming because an essential feature of the invention in issue was missing from the claims of the earlier patent. In addition, the referenced Philips v Mirabella case4 does not concern prior claiming and “whole of contents” novelty. The relevant passage in that case is set out below:

In my opinion the evident intent of s 233(4) is to ensure that the grounds of revocation under the 1990 Act (which, though in some cases are expressed in different terms, are essentially the same as the grounds previously available under s 100 of the 1952 Act) apply as the grounds for revocation of a 1952 Act patent; 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 element of a ground of revocation as being no longer necessary…

While prior claiming and “whole of contents” novelty have different colloquial names, there is a good argument on the law as it presently stands that they are essentially the same ground of invalidity. In fact, “whole of contents” novelty was originally intended to expand the ground of prior claiming, which was considered to be unsatisfactory in practice and too narrow5 . Since its inception, “whole of contents” novelty has developed from a ground applied like a novelty attack to a process involving identifying either a claim or a “notional claim” that claims the subject matter sought to be claimed by the later patent (see our related article Gone but not forgotten … is the archaic ground of prior claiming relevant to “whole of contents” novelty?.  Consequently, it is possible to argue, contrary to the obiter in the Abbot Laboratories case, that the “whole of contents” ground of invalidity is essentially the same ground of invalidity as prior claiming (except notional claims are considered in addition to actual claims). Therefore, lack of “whole of contents” novelty does apply to a patent filed under the 1952 Act in so far as prior claiming also applies. Further, it appears unlikely the court would find a patent valid due to a quirk of the transitional provisions of the 1990 Act where invalidity could be established if that patent were governed solely by the 1990 Act or the 1952 Act.

Nevertheless, it continues to remain undecided under Australian law whether:

• invalidating a patent filed under the 1952 Act will require satisfying the requirements of prior claiming under the 1952 Act alone;

• invalidating a patent filed under the 1952 Act will require satisfying the requirements of “whole of contents” novelty under the 1990 Act as well as the requirements of prior claiming under the 1952 Act; or

• there is no ground of invalidity remaining to address invalidity arguments which would otherwise be the subject of “prior claiming” or lack of “whole of contents” novelty grounds of invalidity.

In our view, it appears most likely that a court will favour option 2 and find that the ground of invalidity is lack of “whole of contents” novelty under the 1990 Act so long as the 1952 Act prior claiming ground would also have been satisfied.

1 Genetics Institute Inc v Johnson & Johnson (1996) 36 IPR 593 at 598.
2 Emory University v Biochem Pharma Inc (No 2) and Another [2000] FCA 1708 at [54].
3 Abbott Laboratories v Corbridge Group Pty Ltd (2002) 57 IPR 432 at [81] per Lee, Emmett and Hely JJ .
4 NV Philips Gloeilampenfabrieken v Mirabella International Pty Ltd (1993) 44 FCR 239 at 253-4; 117 ALR 79 at 93-4; 26 IPR 513 at 527-8 per Lockhart J.
5 1984 report of the Industrial Property Advisory Committee (IPAC), “Patents, Innovation and Competition in Australia”, section 7.3 and Recommendation 14.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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