The Australian Patents Act, 1990 (the "Act") was amended with effect from April 1, 2002 to provide for an absolute novelty requirement, the effect of which is similar to the novelty requirements of the European Patent Convention.
Australian Patent Law has always had generous provisions dealing with grace periods in comparison with the patent legislations of Australia's major trading partners. However, when the novelty requirements of the Act were changed, the Act and the Patent Regulations, 1991 (the "Regulations") were simultaneously amended to render the grace period provisions even more generous.
There is no specific use of the terminology of "grace period" in the Act or in the Regulations. Rather, reference is made to the fact that the validity of a patent application is not affected by certain publication or use.
The various "prescribed circumstances" and "prescribed periods" which result in a grace period being available are discussed below.
The Regulations were amended with effect from April 1, 2002 to include the "prescribed circumstance" that there has been a publication or use of the invention within twelve months before the filing date of the complete application. The publication or use need not have occurred in any special way or under any special circumstances. Also, the disclosure could have been authorised disclosure or unauthorised disclosure.
The "prescribed period" in this case is the period of 12 months after the information was first made publicly available. Within the prescribed period, a complete, or standard, patent application must be filed. Thus, one cannot file a basic application in the form of a provisional application within the 12 month period and then file a complete application after the 12 month period. Naturally, there is nothing stopping one filing a provisional patent application after the public disclosure has occurred provided the Australian complete patent application is filed within 12 months of the date of the information first becoming publicly available.
Importantly, it also does not matter in what way the information was made publicly available or where it was made publicly available. Thus, for example, if the only public disclosure has been the publication of a patent application anywhere, a non-convention application could still be filed in Australia within 12 months of such publication.
Another "prescribed circumstance" is the working in public of the invention for the purposes of reasonable trial and, if because of the nature of the invention, it is reasonably necessary for the working to be in public. The "prescribed period" for this type of disclosure is that a basic application must be filed within 12 months from the start of the first public working of the invention.
Yet another "prescribed circumstance" is making publicly available any information regarding an invention without the consent of the applicant. Such disclosure is to be disregarded so long as a basic application is made within the "prescribed period", being 12 months from the day the information became publicly available.
The publication of the invention in a paper written by the inventor and read before a learned society or published with the inventor's consent by or on behalf of the learned society is a "prescribed circumstance". The "prescribed period" is that a basic application must be filed within 6 months after the first reading or publication of the paper and, if an application claims priority from the basic application, that latter application must be filed within 12 months from the making of the basic application.
The Act does not define a "learned society". An English decision (decisions of English courts generally being followed in Australia), Ralph M. Parsons Co. (Beavan's Application), (1978) FSR 226, suggests that a "learned society" is any non-commercial body of persons seeking to promote and organise the development of specific subjects by the provision of a forum for the exchange and discussion of ideas and the dissemination of information, usually through the publication of its proceedings.
Still a further "prescribed circumstance" is the showing or use of an invention at a "recognised exhibition" as defined. The relevant "prescribed period", in the case of disclosure of an invention at a recognised exhibition, is that a basic application must be made within 6 months of the date of first showing or using the invention at the recognised exhibition and, if an application claims priority from the basic application, that latter application must be filed within 12 months from the making of the basic application.
The public disclosure of an invention by the inventor or the unauthorised public disclosure of an invention without the inventor's consent prior to first filing a patent application may therefore not prove to be fatal. It may still be possible for the inventor or the inventor's assignee to obtain valid patent protection in Australia notwithstanding such disclosure.
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