Essentially, ‘secret use’ is considered to be any use of the invention, prior to filing a patent application, where the aim of the use is to achieve commercial gain for the patentee.
If the invention is already the subject of a granted patent, evidence of ‘secret use’ can leave the patent vulnerable to revocation
If the patentee receives commercial benefit from the invention via ‘secret use’ of the invention before applying for a patent, they benefit from an effective monopoly period longer than that permitted under the Australian law.
The case of Bradken Resources Pty Ltd v Lynx Engineering Consultants Pty Ltd [2012] FCA 944 it was found that the assessment of whether there has been secret use of an invention is not about interpretation of the words ‘secret’ or ‘use’, but rather a ‘practical test’ is required.
Examples of actions that could be considered to be ‘secret use’ (if they occur prior to filing a patent application) include:
- accepting an offer to buy a product that embodies the invention,
- large scale manufacture of a product that embodies the invention, or
- any use of the invention in a way that reaps commercial gain.
These actions are permitted because they typically involve use that is not aimed at achieving commercial gain by the applicant.
For any applications filed since April 2013, the patentee is granted a 12-month grace period in which to file a complete patent application after any (intended or unintended) disclosure or secret use of the invention.
For older patents (for which examination was requested before 15 April 2013) there is no grace period for secret use.
Most patentees that have been caught out by ‘secret use’ provisions did not set out to ‘rig the system’ to gain a longer monopoly. In most cases, the patentee just started using the invention before ensuring the IP was protected.