Novelty Grace Periods in Australia

You know the scenario – your client got a little bit carried away after their eureka moment and made a disclosure that they subsequently regretted, which will prevent them from obtaining valid patent or registered design rights in many important jurisdictions. Fortunately, Australia now has generous novelty grace period provisions for both patents and design registrations, which are outlined in this article.

Design registrations

A 12-month novelty grace period was recently introduced into the Australian Designs Act, and the grace period applies to publication or use of a product which occurred on or after 10 March 2022.

There are some pitfalls to be aware of. Primarily, the grace period does not cover publications made by a foreign patent office. For example, European designs are typically published by EUIPO soon after lodgement. Such publication is not covered by the grace period. In that scenario, whilst it is possible to file an Australian design application within the 6 month Paris Convention priority window (from the EU filing date), it is not possible to validly file an Australian design application after the end of the 6 month Paris convention priority window. Accordingly, caution should be taken in situations where an overseas design application has been filed.

Whilst the grace period can provide a useful tool to enable valid rights to be obtained after a public disclosure, it should not be relied upon as a matter of course. This is primarily because a prior use defence was also added to the legislation, which provides an exemption to infringement for acts that commenced before the priority date of the registered design or where definite steps to do so occurred before the priority date.

For this reason, a design owner is unlikely to be able to prevent a third party from commercializing the design if that third party commenced exploiting the product in the period between the design being made public and the design application being filed.

How is the grace period applied for?

In practice evidence in the form of a declaration may be submitted at lodgement or during substantive examination showing that a certain disclosure was eligible for exclusion due to the 12-month grace period provisions. We can assist you in the preparation of a suitable declaration.

Patents

There are several related yet distinct grace periods available under section 24 of the Australian Patents Act.

Unlike designs, the patent grace periods do not need to be explicitly applied for but may need to be argued as being applicable during examination if a grace period citation must be overcome.

Standard grace period

The most commonly relied on ‘standard’ grace period (Patents Regulations 1991 – REG 2.2C) occurs where a complete application (non-provisional) is filed within 12 months of a disclosure being made by the patentee or the patentee’s predecessor in title. This grace period broadly covers disclosures made with or without the consent of the owner of the invention.

The ‘standard’ grace period does not dictate any conditions regarding the nature or reason behind the public disclosure. The ‘standard’ grace period simply relates to any public disclosure that occurred in the 12-month period before making a complete application.

Information made publicly available by, with or without the consent of the patentee, or their predecessor in title (including the inventor), within 12 months before the filing date of a complete application, must be disregarded when assessing novelty and inventive step.

There is relevant case law which confirms that a complete application includes both Australian standard patent applications and international PCT patent applications designating Australia. As such, a PCT application filed within 12 months of a first public disclosure can be validly nationalised in Australia.

Importantly it is not permissible to disclose the invention, subsequently submit a provisional patent application, and then file a complete application a year later, claiming convention priority. For this reason, the ‘standard’ grace period does not in practice provide additional time to file a non-provisional application. For this reason (and others discussed below), it is always preferable to file a provisional application and secure a priority date before any disclosure is made, rather than rely on the grace period.

Reasonable trial grace period

Less frequently sought is the ‘reasonable trial’ grace period (Patents Regulations 1991 – REG 2.2B) available up to 12 months prior to filing a provisional application, which can be followed by a complete application a further 12 months later. As such, the ‘reasonable trial’ grace period provides a material extension of the maximum available period of patent protection, when compared with the ‘standard’ grace period.

However, it is necessary that the patentee can prove (if required) that the working of the invention was for the purposes of a reasonable trial of the invention, and not for commercial reasons.

For a ‘reasonable trial’ grace period to be available, it is important that ‘it was reasonably necessary for the working to be conducted in public’ because of the nature of the invention, for example it was too large to be trialled in isolation out of public view. Disclosures that could easily have been the subject of confidentiality constraints are unlikely to be protected by the ‘reasonable trials’ grace period.

Drawbacks and risks

The ‘standard’ grace period provisions are intended to provide a “safety net” for applicants who inadvertently disclosed an invention before filing a patent application. As such, it is generally not recommended to rely on the grace period as a matter of course. The following drawbacks should be noted.

There is a prior user defence to infringement. If a third party becomes aware of an invention because of the applicant’s disclosure, and commences exploiting a similar invention, that third party is permitted to continue their activity, even after the patent applicant subsequently files an application (within the grace period) and obtains a granted patent.

Furthermore, when relying on the ‘reasonable trial’ grace period, the onus lies on the applicant of ultimately being able to prove that the public disclosure occurred for the purpose of reasonable trial and experimentation, and that it was ‘necessary for the working to be in public’. There are relevant cases in which patentees have lost their rights for failing to show that the reasonable trial requirements were satisfied.

Finally, most countries do not offer novelty grace period provisions. As such, disclosures made before a priority application has been filed will prevent valid patent protection from being obtained in many jurisdictions.

Please contact us if you would like any further information on this topic.

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