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.

What’s the priority date for a divisional patent?

Mont has an innovation patent for a travel pack.

It sued Phoenix for infringing the innovation patent; Phoenix  counter-claimed for invalidity on the grounds of Mont’s own use commencing in October 2004.

Patents Act 1990 s 24 (read with Reg. 2.2(1A)) provides a patentee with a grace period: protecting the patentee against attacks on grounds of lack of novelty or inventive step/innovative step by reason of the patentee’s own authorised use or disclosure within the 12 months prior to “the filing date of the complete specification”.

The background was as follows:

In October 2004, it had started offering travel packs made according to the invention for sale.

In May 2005, it filed a complete application (with a complete specification) for a standard patent.

In November 2006, however, it filed a complete application (and of course a complete specification) for an innovation patent as a divisional application from the earlier standard application and this application matured into the innovation patent.

The trial judge had found that the “grace period” had to be calculated from the date of filing the complete specification for the divisional application, not the parent.

The Full Court has now allowed an appeal ruling that “the complete specification” referred to in reg. 2.2(1A) in the case of a divisional application is the complete specification for the parent.

Jagot J (with whom Emmett J agreed) explained the rationale:

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.
77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

76 By the provisions relating to divisional applications, the Act and Regulations establish a scheme in which an applicant may ensure that a claim for an invention that the applicant has previously disclosed in a complete specification as filed and which is within the scope of the claims of the complete specification as accepted takes a priority date as if the claim had been included in that earlier complete specification. The scheme thus ensures that the requirements of novelty and inventive step or innovative step for the claims within the divisional application (which are essential determinants of the validity of the patent application) are assessed by reference to a priority date established by the date of the earlier (or parent or original), rather than the later (or divisional) specification.

77 All features of this statutory scheme for divisional applications are consistent. Hence, the claims in any patent granted on a divisional application take the priority date of the claims in the earlier (or parent or original) application. Publications or uses of the claimed invention, after that priority date, cannot affect the validity of any patent granted. The term of any patent granted on a divisional application is also taken to have started on the same date as the date of the earlier (or parent or original) application.

Similarly Bennett J said [49]:

49 The scheme of the Act provides that, where the invention of the divisional was disclosed in the parent, the publication or use of the invention within 12 months before the filing date of the parent must be disregarded for the purposes of assessing the novelty and inventive/innovative step of each of the parent and the divisional, provided that a patent application for the invention is filed within the prescribed period. This applies where the divisional is of a parent standard patent or a parent innovation patent. Where the invention of the divisional was disclosed in the parent, the words “the complete application” in reg 2.2(1A) refer to the parent application and not to the divisional application.

Jagot J also provided a detailed rebuttal of Phoenix’ contentions.

Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84

ps: IPTA was granted leave to intervene (and while advocating the view that the Full Court adopted, was ordered to pay any additional costs incurred by the parties as a result of the intervention).

pps:a patentee who needs to rely on a grace period to preserve the validity of the patent in Australia may well still lose the patent outside Australia where the grace period does not apply