In Abbey Laboratories Pty Ltd v Virbac (Australia) Pty Ltd (No 3) [2025] FCA 1179 (“Abbey”), an Australian Judge of the Federal Court, Jackman J[1], has departed from the prior approach for considering a class of potentially novelty destroying documents, potentially simplifying how this type of prior art will be treated in future cases.
Novelty of a patent claim is judged primarily relative to documents or acts that were publicly available anywhere in the world before the priority date of the claim under consideration. However, the Australian Patents Act also recognises a special class of documents: Australian patent applications that have an earlier priority date than the claim under consideration but were published after the priority date of the relevant claim. This type of document is known a “whole of contents” document.
Before the present case, it was accepted practice that to challenge a patent based on a whole of contents document, it was necessary to (1) draft notional claims based on the whole of contents document, and (2) establish that those claims were fairly based on an earlier disclosure in the whole of contents document or a related priority document.
This practice stemmed from the decision of Emmett J in EI Du Pont de Nemours and Co v ICI Chemicals & Polymers Ltd [2005] FCA 892 (“DuPont”). Emmett J came to this position because the legislative definition in the Patents Act says that information in a whole of contents document should be taken into account “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 the mechanism for determining a priority date requires consideration as to the date at which the subject matter of the claim is first disclosed.
In Abbey, Jackman J explicitly rejected the DuPont approach, holding that the requirement to formulate a notional claim and assess its fair basis to be unduly elaborate and artificial. He also held that it diverted attention from the core statutory test of the Australian Patents Act, which simply asks whether the whole of contents document discloses the invention as claimed.
Instead, Jackman J said that it was only necessary to look at what was disclosed by the whole of contents document and that any issue as to whether the published information in the whole of contents document was entitled to an earlier priority date could be made by a textural comparison with a relevant priority document. That is, by determining whether the relevant disclosure was made in respect of the whole of contents document before it was in relation to the patent being challenged. In essence, a simple test as to who got there first.
While it remains to be seen whether future Courts will adopt Jackman’s approach, we hope that they will as this straightforward approach seems to be what the legislation intended.
[1] Fun-fact, Jackman J is the brother of actor Hugh.
About the author:
With over 25-years’ experience as a patent attorney in the engineering/ICT sector, Nick has helped numerous clients achieve commercially beneficial ownership and control of their IP, while mitigating against risks posed by competitors. Nick has represented Australia’s largest filer of patent applications for over 15 years. He also has considerable IP litigation experience and has worked on one of Australia’s largest pieces of IP litigation for which involved over 20 patents. He helps clients to improve their position in advance of enforcement proceedings or, when defending clients, he identifies weaknesses in competitors’ IP positions with a view to finding a safe space to operate in.
