10 July, 2009
Spruson

Ruling Bolsters Grace Period for Divisional Applications

Ruling Bolsters Grace Period for Divisional Applications

Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2009] FCAFC 84

On 1 April 2002, Australian patent legislation introduced expanded “grace period” provisions for disregarding certain disclosures as potential prior art. Under the expanded grace period, any information made publicly available by publication or use of an invention authorised by the patentee must be disregarded when considering the novelty and either the inventive step or the innovative step of an invention, provided a complete (non-provisional) patent application for the invention in Australia is made and has a filing date within 12 months of the first such publication or use.

In proceedings concerning the validity of an innovation patent granted on a divisional application, Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476, a single judge of the Federal Court of Australia (FCA) last year was called upon to construe the expanded grace period provisions for the first time. Of concern, the court construed the grace period provisions so that for a divisional application the grace period operated with respect to the filing date of the divisional application, not the earlier filing date of the parent application disclosing the same invention. Thus, the grace period in relation to a divisional application would be of limited practical value, except for the unusual case where the divisional application itself was filed within 12 months of the first such authorised publication or use.

Given the unfavourable implications of the trial court’s interpretation, the Institute of Patent Attorneys of Australia (IPTA) believed this decision sufficiently affected the public interest for IPTA to intervene in support of Mont’s appeal to the Full Federal Court. Spruson & Ferguson Lawyers, and in particular our Simon Williams, provided pro bono assistance to IPTA for the preparation and presentation of the written and oral submissions by IPTA.

In allowing the appeal, the Full Federal Court ruled unanimously that, when considering the grace period in respect of a divisional application, “the filing date of the complete application” for the grace period is a reference to the filing date of the parent application rather than the divisional application. Consequently, a divisional application or its granted patent is entitled to the filing date of the parent application for the grace period, provided that the parent application was filed within 12 months of the first authorised publication or use and both the parent and the divisional applications disclose the same invention for which the grace period is relied on.

The decision of the Full Court is a welcome clarification of the grace period provisions and bolsters the grace period in Australia. Out of abundant caution, we do not advocate resorting to the grace period if at all possible. Instead, we recommend filing a patent application for an invention before any public disclosure of the invention is made.


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