Since 1 April 2002, the Australian Patents Act 1990 (Cth) (“The Act”) has included a novelty grace period. Specifically, Section 24 of The Act requires that when considering if an invention is novel or involves an inventive step or an innovative step, the person must disregard any information derived from the applicant that was made publicly available by, with or without consent of the patentee in the 12 months prior to the filing date of the patent.
The grace period is intended to provide a savings provision to enable valid patent protect to still be obtained in Australia within 12 months of publicly disclosing the invention. However, the grace period should not be relied upon as a matter of routine practice, as there are significant potential drawbacks.
Specific limitations of the novelty grace period:
- The grace period only applies to “complete applications”, meaning standard or innovation patent applications. It does not apply to provisional patent applications.
- The applicant does not have any enforceable rights during the period between the first public disclosure and the eventual filing date of the patent application. This gives rise to a possible scenario in which a third party becomes aware of the invention as a result of the initial public disclosure. If the third party then commences exploiting the invention, even if the third party’s activities fall within the scope of one or more claims of the patent (once ultimately granted), the third party will have the right to continue their activities.
- Whilst a novelty grace period is available in Australia, the United States and a handful of other countries, most countries do not offer such provisions. As such, any public disclosure which occurs before filing a patent application will generally prevent you from securing valid patent protection overseas in most jurisdictions.
The Intellectual Property Amendment (Raising the Bar) Act 2012 which came into effect in April 2013 made various changes to the Australian Patents Act 1990. One important change concerns the amended definition of “secret use”. In particular, Section 9e of The Act now clarifies that “any use of the invention… for any purpose” is not to be taken as secret use in the 12 month period prior to filing a complete application. Secret use is a ground for invalidity, under Section 18(1)(d) of The Act. Accordingly, this amendment has the effect of broadening the novelty grace period to include any public disclosure or use which occurs in the 12 month period leading up to filing a complete patent application.
In contrast to the Australian patent legislation, there is currently no novelty grace period available in the Australian Designs Act 1906 (Cth). A novelty grace period was recommended in the 2013 Advisory Council on Intellectual Property (ACIP) issues paper. Accordingly, this is something which may come into effect in the medium term. In the meantime, under the current provision it is essential that an Australian design application is filed before:
(i) any publication or use of the product occurs; or
(ii) within six months of the first filed application in a Paris Convention member state, assuming a priority claim is to be made.
The novelty grace period provisions provide a useful tool in an overall patenting strategy, and a way of validly filing an Australian patent application within 12 months of the first public disclosure of an invention. The inherent drawbacks associated with relying on the novelty grace period mean that in practice it should be used as a savings provision in the event of a public disclosure, but it should not be used as a replacement for securing a priority date by filing a provisional patent application.
Please contact Cotters if you would like any further information.
By Chris Atichian
Cotters Patent & Trade Mark Attorneys
25 September 2014