In around October 2004, Mont Adventure started offering for sale ""Astro 65"" and ""Astro 80"" model travel packs. On 13 May 2005, Mont Adventure filed a complete standard patent application claiming features of the travel packs. Mont Adventure relied on the grace period provisions of the Patents Act 1990 (Cth) (the Act) to maintain the potential validity of a standard patent granted to it on the application in light of its previous offering for sale of the Astro 65 and Astro 80 travel packs.



On 22 November 2006, Mont Adventure filed an application for an innovation patent as a divisional application from its previously filed standard patent application. As a divisional application, the innovation patent application is entitled to share the priority date of the parent standard patent application. The effect of this is that the priority date for both the standard patent application (parent) and the innovation patent application (divisional) was 13 May 2005 (the filing date of the standard patent application), as shown below.

Mont Adventure brought proceedings against Phoenix Leisure Group Pty Ltd (Phoenix) for infringement of its innovation patent. In response, Phoenix sought the revocation of the innovation patent, arguing, amongst other things, that the claimed invention was not novel and did not involve an innovative step, due to on Mont Adventure's prior offering for sale of the Astro 65 and Astro 80 travel packs.

THE DECSION

Grace Period Provisions

Section 24 of the Act provides, amongst other things, that when deciding whether an invention is novel or involves an innovative step, prior publication or use of the invention by the nominated person must be disregarded if:

(a) the prior publication or use is in the ""prescribed circumstances""; and

(b) ""a patent application for the invention is made within the prescribed period.""

Regulation 2.2(1A) defines a ""prescribed circumstance"" as being ""the circumstance that there was a publication or use of the invention within 12 months before the filing date of the complete application"".

Regulation 2.3(1A) defines the ""prescribed period"" as ""the period of 12 months after the information was first made publicly available"". In the case of divisional applications, the filing date of the divisional application is taken to be the filing date of the parent application, by virtue of regulation 2.3(4).

Prescribed Circumstance

Justice Stone of the Federal Court of Australia was asked to consider, as a preliminary question, whether ""the filing date of the complete application"" (in the definition of ""prescribed circumstance"") was the filing date of the parent (standard) patent application, or the divisional (innovation) patent application.

Her Honour considered that section 24 relates to whether an invention is novel and involves and inventive or innovative step, and that accordingly a reference to a ""complete application"" is likely to be a reference to the application the validity of which is in question, that is, the divisional application. In addition, if the reference to ""a filing date of a complete application"" was a reference to the filing date of the parent application, there would be no need for deeming regulations such as regulation 2.3(4) (which deems the filing date of the divisional application to be the filing date of the parent application).

Accordingly, Her Honour decided that the ""filing date of the complete application"" was the filing date of the divisional application.

COMMENTARY

Mont Adventure's divisional innovation patent application was filed within the prescribed period, because:

(a) the filing date for the divisional application is taken to be the filing date of the parent application (regulation 2.3(4)); and

(b) the filing date of the parent application (13 May 2005) was within 12 months after the information was first made publicly available (October 2004).

However, the offering for sale of the travel packs in October 2004 could not be disregarded when considering the novelty or innovative step claimed in the divisional innovation patent, because this prior use was not within 12 months before the filing date of the divisional application (on 22 November 2006).

The decision highlights some of the quirks of the provisions implementing the grace period. For example, the rationale for having both a ""prescribed period"" and ""prescribed circumstance"" is unclear, particularly where the limiting factor will be the ""prescribed circumstance"", which will always have a commencement date the same as, or later than, the ""prescribed period"". This is particularly confusing in light of regulation 2.3(4), which specifically addresses divisional applications in the context of the ""prescribed period"", which has been rendered largely irrelevant by this decision. Regulation 2.2(1A) is also curiously drafted, as on its face it appears to require any publication or use in the 12 months before the filing date, and does not appear to define the disclosures that may be disregarded when assessing novelty and innovative step.

CONCLUSION

The decision is currently under appeal to the Full Court of the Federal Court of Australia, and until the nature and effect of the grace period provisions is clarified by the Full Federal Court, care should be taken to file all patent applications (including divisional applications) that could be invalidated by a disclosure, within 12 months of that disclosure, as any subsequently filed divisional applications may be invalid.