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 J.
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 public sale.
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 period.
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 November 2006.
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 China.
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