Divisional patents and the prior art “grace period”
Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476
On 2 October 2008, Justice Stone delivered a decision which challenged the accepted thinking on divisional patents, novelty and the 12 month grace period for prior use and publication of an invention.
We all know that a patent must be novel, and that use or disclosure of an invention prior to filing a patent application might destroy that novelty. In 2002, amendments to the Patents Act and Regulations introduced a 12-month “grace period”, so that certain use or publication of an invention within the 12 months prior to filing the “complete patent application” does not invalidate the patent. Essentially, the person making the decision about novelty is directed to disregard certain information made publicly available within the preceding 12 months.
Most IP lawyers and patent attorneys assumed that, if you filed a divisional application, whether for a standard or innovation patent, during prosecution of a standard patent, the patentee could rely upon the grace period of the original patent filing to establish validity.
However, Justice Stone’s decision in Mont Adventure Equipment v Phoenix Leisure Group [2008] FCA 1476 is likely to put a stop to this well established practice.
Mont Adventure Equipment filed a standard patent application on 13 May 2005. It applied for a divisional patent - an innovation patent for a travel pack - on 22 November 2006.
The travel pack had been sold since October 2004 - within 12 months of the application for the original standard patent on 13 May 2005, but more than 12 months before the complete divisional application was filed.
Thus, if the grace period was determined by the date of the complete application for the original patent, the information made publicly available by the sale of travel packs would be excluded from the prior art base when determining whether the innovation was novel or involved an innovative step.
If the grace period was determined by the date of the complete application for the divisional patent, the information made available by the sale of the travel packs could be taken into account in assessing the prior art base.
Justice Stone examined the Patents Regulations and found that the grace period commences 12 months prior to filing a complete application for a divisional patent, and not by reference to the date of application for the original patent.
Accordingly, Mont was not protected from the adverse consequences of its sale of the travel packs from October 2004. Those sales have probably destroyed the novelty of its divisional innovation patent.
Justice Stone’s decision is a controversial one, because it effectively removes the benefit of the initial grace period for divisional applicants. We can expect either an appeal or a push for legislative amendment of the relevant provisions.
Patentees need to be aware that if there is any use or publication of an invention or innovation prior to applying for a patent, they have 12 months from the date of that publication or use, to file for the original patent and any divisional patents. The decision is a timely reminder - keep your cards close to your chest prior to filing for a patent!
Note: an appeal was filed by Mont Adventure Equipment after this IP Alert was issued. The appeal will be heard by the Full Court of the Federal Court (Emmett, Bennett & Jagot JJ presiding) in May 2009.
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