“Grace” full return for divisional patent applications
Full Federal Court restores usefulness of “grace period” for divisional applications
In October last year, DibbsBarker reported on the Federal Court’s decision in Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476. See our October 2008 IP Update for the factual background to this case.
At first instance, Stone J had to determine whether in the context of a divisional application, is the “filing date of the complete application” within the meaning of regulation 2.2(1A) of the Patent Regulations 1991 (the Regulations) the filing date of the parent application or the filing date of the divisional application?
Section 24(1) of the Patents Act 1990 (the Act) provides:
(1) For the purpose of deciding whether an invention is novel or involves an inventive step, the person making the decision must disregard:
(a) any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and
(b) any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee;
but only if a patent application for the invention is made within the prescribed period.
Relevantly, regulation 2.2 (1A) provides:
(1A) For paragraph 24(1) (a) of the Act, the circumstance that there was a publication or use of the invention within 12 months before the filing date of the complete application is a prescribed circumstance.
Regulation 2.3 defines “prescribed circumstances” as:
(1A) For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the applicant relies on the circumstance in subregulation 2.2 (1A), the prescribed period is the period of 12 months after the information was first made publicly available.
(1) …
(2) …
(3) Subregulation (4) applies:
(a) if an application for a patent is a divisional application:
(i) under section 79B of the Act for an invention disclosed in the specification filed with a previous application for a standard patent (the original application); …
(ii)…; and
(b) only to information disclosed in the divisional application that was disclosed in the original application.
(4) For determining the prescribed period for subsection 24 (1) of the Act, the filing date of the divisional application is taken to be the filing date of the original application.
Her Honour held that the “filing date of the complete application” within the meaning of regulation 2.2(1A) of the Regulations is the filing date of the divisional application and not the parent application. This meant that the common practice of dividing off patents in the form of divisional applications from parent applications could potentially expose these divisional applications to attack on the basis of invalidity, if the parent application relies on the grace period in regulation 2.2(1A), and if the divisional application was not filed within 12 months of the earliest disclosure.
However, earlier this week, in Mont Adventure Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84, the Full Federal Court set aside the primary decision and unanimously found that the divisional application should itself receive the benefit of grace. Jagot J (with whom Emmett J agreed) explained that the Act and Regulations set up a scheme for divisional applications which allow applicants to claim for an invention previously disclosed in a complete specification provided the divisional application is within the scope of the claims of the complete specification. The scheme ensures that the requirements of novelty and inventive step or innovative step for the claims of the divisional application are assessed by reference to a priority date established by the filing of the parent application.
Similarly Bennett J said that where an invention claimed in a divisional application was disclosed in the parent application, the publication or use of the invention within the 12 month grace period before the filing of the parent application must not be taken into account when assessing the novelty and inventive/innovative step of each of the parent and the divisional applications, provided that a patent application for the invention is filed within the prescribed period.
Essentially, the Full Federal Court’s decision upheld the commonly held view that divisional applications can be validly derived from a timely filed parent application.
Helen Kavadias, Associate, and Scott Sloan, Partner, DibbsBarker.
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