Australia: Full Federal Court Rules On The Meaning Of ´Publicly Available´ For The Issue Of Novelty

Last Updated: 10 September 2008
Article by Ben Coogan

In Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139, the Full Federal Court of Australia has considered whether information that discloses the essential integers of a patent was publicly available prior to the priority date.


This case involved a patent called a 'Collapsible Canopy Framework having Captured Scissor Ends with Non- Compressive Pivots'. The appellants were alleged to have infringed the respondents' patent by selling various caravan shade structures.

At first instance the trial judge found that the appellants had infringed the patent and that the patent withstood the revocation grounds raised against it - being obviousness, want of novelty, lack of clarity and that the claims were not fairly based on the specification. The only issues on appeal were inventive step and novelty (this update will only deal with novelty).

The appeal succeeded on novelty but was unsuccessful on inventive step - therefore one of the claims of the patent was still found to be infringed.

Novelty Destroying Information Which Is Publicly Available

Section 7(1) of the Patents Act 1990 provides:

'(1) For the purposes of this Act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately:

(a) Prior art information...made publicly available in a single document or through doing a single act.'

Relevantly, the appellants pleaded prior use in Australia before the priority date through the display at public events such as motocross and jet ski races of a collapsible canopy designed by the corporate appellant's director, called the Original.

At trial, the judge found that the Original anticipated the claims the subject of the proceeding (except claim 14). However, her Honour found that the Original had not been made available for inspection by members of the public. This finding was based on the following:

  • There were no copies of the Original in existence and the only photos did not show an important integer of the patent.
  • While there was evidence that the Original had been shown at public events, the director had retreated from evidence relating to where he had made the canopy available to the public. The basis for this seemed to be that he hoped to patent the Original, and therefore attempted to keep it out of 'public view'.
  • Although there was some corroborated evidence from the appellants' metal fabricator, the circumstances suggested that the information contained in the Original was confidential and could not be imparted by the metal fabricator to others, as is required.

On appeal, the Full Court identified the following relevant principles:

  • The information must have been made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it.
  • It is immaterial whether or not the invention has become known to many people or a few people. As long as it was made available to persons as members of the public, the number of those persons is not relevant. Availability to one or two people as members of the public is sufficient in the absence of any associated obligation of confidentiality.
  • The question is not whether access to an invented product was actually availed of but whether the product was made available to the public without restraint at law or in equity.
  • In order to be available, information said to destroy novelty must:
  • Be of a kind that would disclose to a person skilled in the relevant art all of the essential features or integers of the invention.
  • Enable the notional person skilled in the art at once to perceive, to understand, and to be able practically to apply the discovery, without the need to carry out further experiments in order to arrive at that point. The Full Court found that the Original had been made publicly available and allowed the appeal on that point because:
  • The change of the director's evidence did not mean that there had not been public disclosure, as his subjective hopes and intentions could not prevent the display at the motocross and jet ski races as constituting disclosure.
  • Even if the Original was kept out of 'public view', there was evidence that, for example, members of the public such as other competitors, race organisers and officials had access to where the Original was erected.

However, the Full Court did not overturn the trial judge's decision in relation to the disclosure to the metal fabricator, as they were not convinced her Honour had erred in holding that there was a confidential relationship.

Lessons To Be Learnt

This decision emphasises the importance of ensuring that good records are kept. For example, here the appellants' arguments could have been bolstered by:

  • Dated photos of all of the relevant parts of the Original.
  • Diary notes that record the details of some of the people who had seen the Original and what relevant comments they made (and evidence from those people).
  • Records as to the basis of the appellants' relationship with the metal fabricator (in order to give certainty about whether there was a relationship of confidence).

While this can be a difficult and time consuming practice to maintain, it is an excellent risk management strategy.

Further, it raises the issue that confidentiality agreements or clauses within other agreements are important factors in determining whether information was provided by one party to another (eg to fabricators, manufacturers or consultants etc) on a confidential basis.

DLA Phillips Fox would be pleased to assist any client with ensuring they have adopted the best internal practices in order to protect their patents from claims of revocation, or to prove prior use of a product, should the issue ever arise. For more information, please contact:

Phillips Fox has changed its name to DLA Phillips Fox because the firm entered into an exclusive alliance with DLA Piper, one of the largest legal services organisations in the world. We will retain our offices in every major commercial centre in Australia and New Zealand, with no operational change to your relationship with the firm. DLA Phillips Fox can now take your business one step further − by connecting you to a global network of legal experience, talent and knowledge.

This publication is intended as a first point of reference and should not be relied on as a substitute for professional advice. Specialist legal advice should always be sought in relation to any particular circumstances and no liability will be accepted for any losses incurred by those relying solely on this publication.

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