IPTA applies for leave to intervene in case in support of Mont
Adventure Equipment's position.
Grace period is now calculated from the filing date of the
complete specification for the parent application, not the
divisional, and is a welcome decision for all divisional patent
A unanimous decision of the Full Federal Court in Mont
Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd
 FCAFC 84 has restored the position on grace periods for
divisional patents. Justice Stone's original decision in
October last year, as reported in an earlier
eAlert!, had the effect that a divisional patent was not able
to claim the benefit of the "grace period" that was
afforded to its parent patent from before the date of filing.
This meant that the owner of a divisional patent application
would have risked a finding of invalidity of the divisional patent
if it used or disclosed the invention in the 12 month period prior
to the filing of the original patent. The decision was
understandably alarming at the time.
The latest decision is the first time that the Institute of
Patent and Trade Mark Attorneys of Australia (IPTA) has applied for
leave to intervene in a case in which it was not directly involved.
IPTA's submissions, in support of Mont Adventure
Equipment's position, were influential on the judges and showed
the importance of the decision to the protection of patents in
The Full Federal Court decided the case as a matter of statutory
interpretation because of the ambiguity in this area of patent law,
stating that the "drafting of the [Patent] Regulations is not
a model of clarity." Although all three judges wrote separate
judgements, they all essentially held elements of the following:
that the reference to the "the complete application" in
regulation 2.2(1A) means the initial standard (or
"parent") patent application that "first discloses
the invention" rather than each divisional application.
In interpreting the provisions, the judges referred to the
Patents Act 1990 (Cth), Patents Regulations,
Explanatory Statements and contents of each legislative amendment
that has resulted in the current consolidated law to infer that
"the intention was to give divisional applications the same
protection in the same circumstances as the parent
The result of the latest decision is that the grace period is
now calculated from the filing date of the complete specification
for the parent application, not the divisional, and is a welcome
decision for all divisional patent owners.
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