Australia has a general grace period commencing 12 months prior to the filing of an Australian patent application. During this time, disclosures originating from the patent applicant are disregarded for the purpose of assessing novelty, inventive step or innovative step in the case of Australian innovation patents.
The general grace period has greatly improved the position of applicants who inadvertently or thoughtlessly disclose their invention prior to filing an Australian patent application. It also assists those applicants who, for whatever reason, lose their claim to an earlier priority date, thereby exposing them to claims of anticipation and obviousness in light of their own disclosures or use.
The grace period has also benefited those applicants that strategically use the grace period to delay the filing and associated costs of Australian patent applications. Such applicants effectively extend by up to 12 months, the time a patented invention can be commercially used before the expiry of patent rights. However it should be appreciated that this commercial benefit comes with potential downsides.
The main problem associated with relying on the grace period to file patent applications after disclosure or after commercial use has commenced, is that third parties can exploit a claimed invention in a granted patent without infringement if they had adopted the invention or took definite steps to adopt it prior to the priority date of the Australian patent application.
Ordinarily the defence provided by s 119(1) of the Patents Act 1990 described above does not apply if the third party themselves derived the invention from the patent applicant. However s 119(3) of the Act makes it clear that the s 119(1) defence does extend to third parties that derive the invention from the patent applicant as a result of the applicant’s intentional public disclosure or use if made during the grace period.
It follows that disclosure or commercial use made of an invention by a patent owner prior to the priority date and during the grace period can potentially create a class of users that are immune to claims of infringement.
Worse still, in cases of applications filed on or after 27 September 2006, the rights of prior users under s 119 to exploit the invention without infringement may be disposed of or on sold to third parties.
Prior users that keenly adopt new technologies would therefore present a considerable risk to patentees that self disclose or commercially use a patented invention prior to the priority date of their patent. This would particularly be the case with respect to inventions that are immediately popular and easily copied.
If you have any questions about the operation of the prior use defence in Australia, please don’t hesitate to contact us.