The grace period and “reasonable trial”

Mack Innovations lodged a provision patent application for a “cable pulling apparatus for helicopters” on 12 August 2005. The complete application for a standard patent was lodged on 14 August 2006 and a standard patent was subsequently granted (yes, 12 and 13 August 2006 fell on the weekend).

Apparently, Mack Innovations had begun testing parts and subsequently a prototype of the device in public around March 2005; i.e., about 5 months before the provisional application was lodged.

Rotorco, having been sued for infringement, tried to argue that  Mack Innovations’ own actions in March 2005 had rendered the patent “not novel”; contending that the grace period did not apply because the complete application was filed more than 12 months after first public use.

The problem for Rotorco was that its summary judgment application was based on reg. 2.2(2)(d), not 2.2(1A). Reg. 2.2(1A) provides for a grace period where there was a publication or use “within 12 months before the filing date of the complete application”. On the other hand, reg. 2.2(2)(d) applies where:

(d)    the working in public of the invention within the period of 12 months before the priority date of a claim for the invention:
(i)    for the purposes of reasonable trial; and
(ii)    if, because of the nature of the invention, it is reasonably necessary for the working to be in public.

and Tamberlin J, albeit in dicta, had already ruled that filing the provisional application on which the patent was based within the 12 months grace period was sufficient for reliance on this provision.

One might add that, given the difference in wording between reg. 2.2(1A) and 2.2.(2)(d), this conclusion seems consistent with the Full Court’s decision in Mont Adventure Equipment (admittedly dealing with the application of the grace period in the context of a divisional application).

Mack Innovations (Australia) Pty Limited & Anor v Rotorco Pty Limited & Anor [2010] QSC 138 (McMurdo J)

As this was an application for summary judgment, I am not sure whether that means it still remains to be resolved whether or not Mack Innovations’ use was in fact reasonable trial which it was reasonably necessary to conduct in public.

Does the international intellectual property system help or hinder exporters?

Is the question that will be addressed at a 3 hour forum in Melbourne on 25 May 2010, organised by IP Australia.

Three speakers:

Amy Roy, General Counsel of Boost Juice.
Amy will discuss the Boost Juice experience in regards to exporting and protecting their IP overseas. She will also discuss what can be improved from a business perspective to make the IP system easier for exporters to use.

Karen Sinclair, President of the Licensing Executives Society of Australia and New Zealand.
Karen will discuss how the IP system affects the role of an attorney, what works well, what does not work well and the future outlook.

Victor Portelli, General Manager of Patents and Plant Breeder’s Rights at IP Australia.
Victor will discuss the current international IP systems in place, trends in the international environment and possible future developments.

Registration is free and includes lunch.

Details and rsvp here.