Australian patent law provides for a United States-style
"grace period". The effect of the grace period is to
allow for use or disclosure of an invention in the 12-month
period prior to filing a complete patent application in
Australia. We previously reported (
click here) on a controversial decision of the Australian
Federal Court that held that the grace period applicable to a
"parent" application is different to that of its
divisional "child". This brought with it the consequence
that a divisional application may be found invalid if there had
been disclosure of the claimed invention within the grace period of
its parent application.
To the widespread relief of the Australian patent profession,
this decision has now been reversed. In a unanimous decision of the
Full Federal Court in Mont Adventure Equipment v Phoenix
Leisure Group (2009) FCAFC 84, the term "the filing date
of the complete application" (Reg.2.2(1A) of the Patents
Regulations 1991) with reference to a divisional application
is now understood to refer to the filing date of the
"parent" complete application:
"The phrase "the filing date of the complete
application" must be construed in the context of all of the
provisions of the 1990 Act and Regulations, so as to give a
harmonious result achieving the apparent goal of the provisions. To
construe the phrase as referring to the parent application and not
to the divisional application achieves that result". Emmett
The facts of the case were that on 13 May 2005, the Applicant
filed a complete application for a standard patent. On 22 November
2006, they later filed a divisional application. However, around
October 2004 (i.e. within 12 months prior to filing the
complete application), two products defined according to certain
claims of the divisional had been offered by the Applicant for
When the divisional was later granted (incidentally, as an
Innovation patent) and infringement proceedings commenced, the
Respondent cross-claimed for invalidity of the divisional,
asserting that the Applicant was not entitled to rely on the grace
The issue at hand was whether, for the purposes of determining
the validity of the divisional, the "filing date of the
complete application" within the meaning of Reg.2.2(1A) was
the filing date of the application for the parent, i.e. 13
May 2005; or the filing date of the divisional,i.e. 22
At first instance, Justice Stone held that the wording of
Reg.2.2(1A) required that the grace period in respect of the
divisional was the 12-month period immediately prior to the
filing of the divisional itself (i.e. 12 months from
22 November 2005), not the parent (cf. 12 months from 13 May 2004).
Accordingly, the Applicant's public disclosure around
October 2004 pre-dated the relevant grace period and therefore
anticipated the invention claimed in the divisional application.
The effect of this decision was that the facility to file a
divisional during the course of prosecution of an Australian patent
application was of restricted value when the invention had been
disclosed during the grace period of the parent.
The decision reached upon appeal confirms, at least for
now, the relative certainty that Australian patent Applicants have
generally assumed when seeking to rely upon grace period provisions
under our local law.
Shelston IP's standard practice has always been to
exercise an abundance of caution in advising clients that the
Australian grace period provisions should only be relied upon as a
"back-up" measure following inadvertent disclosure of
one's invention – and that equivalent provisions
do not apply to other major jurisdictions such as Europe, Japan and
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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