Grace Periods - Mont Adventure Equipment v Phoenix Leisure Group
Beware of the Australian Grace Period provision - It has limitations! |
| Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476 |
 7 October 2008 |
| Case review by Virginia Beniac-Brooks |
| In Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476 Justice Stone was asked consider the meaning of "the filing date of the complete application" in clause 2.2(1A) of the Patents Regulations 1991 (Cth) in the context of a divisional application. In brief the facts of the case were as follows. On 13 May 2005 the Applicant, Mont Adventure, filed a complete application for a standard patent. On 22 November 2006 and with the aim of obtaining immediate patent rights to commence infringement proceedings against the Respondent, Mont Adventure filed a complete application for an innovation patent as a divisional application of the standard patent application and also filed request for expedited examination. Prior to filing the standard patent application Mont Adventure’s “Astro 65” and “Astro 80” model travel packs that embodied each of the integers of claims 1-5 of the Innovation Patent were offered for sale to the public on or about October 2004. Section 24(1)(a) of the Patents Act provides as follows: |
| “(1) For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard: (a) any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and (b) … but only if a patent application for the invention is made within the prescribed period.” |
| The relevant Patent Regulations include cl 2.2(1A) and cl 2.3, which provide: Cl 2.2 sets out the “prescribed circumstances” as follows: |
| “(1A) For paragraph 24(1)(a) of the Act, the circumstance that there was a publication or use of the invention within 12 months before the filing date of the complete applicationis a prescribed circumstance.” |
| Cl 2.3 provides the “prescribed period” to be as follows |
| “(1A) For information of the kind referred to in paragraph 24 (1) (a) of the Act, if the applicant relies on the circumstance in subregulation 2.2 (1A), the prescribed period is the period of 12 months after the information was first made publicly available. (1) … (2) … (3) Subregulation (4) applies: (a) if an application for a patent is adivisional application: (i) under section 79B of the Act for an invention disclosed in the specification filed with a previous application for a standard patent (the original application); … (ii)…; and (b) only to information disclosed in the divisional application that was disclosed in the original application. (4) For determining the prescribed period for subsection 24 (1) of the Act, the filing date of the divisional application is taken to be the filing date of the original application.” |
| The issue before Her Honour was whether for the purpose of determining the validity of the Innovation Patent, and on the facts stated above, “the filing date of the complete application” within the meaning of clause 2.2(1A) of the Patent Regulations was: |
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| Putting the issue of the claims in the innovation patent being fairly based on the specification for the standard patent application, her Honour noted that if the “filing of the complete application” had the meaning set out in paragraph (a) of the question the 12 month ‘grace period’ provided for in cl 2.2 would commence on 13 May 2004. This would mean that, pursuant to s24, the information made publicly available by the sale of the travel packs on or about October 2004 would have to be excluded from the prior art base in determining whether the invention claimed in the Innovation Patent is novel or involves an innovative step. Conversely if construction (b) was correct meaning then the grace period would commence on 22 November 2005 and as such the information made publicly available by the sale of the packs could be taken into account in assessing the prior art base. Justice Stone held that the "complete application" to which cl 2.2(1A) refers is the complete application for the Innovation Patent and therefore the information made publicly available by the sale of the travel packs from October 2004 could be taken into account in determining whether the invention claimed in the Innovation Patent is novel or involves an innovative step. This decision has highlighted the limitations of the Australian grace period provision especially for divisional applications and the importance of keeping quiet before filing. |
