19 March 2009

Interpreting "filing date" for grace period

Case - Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2008] FCA 1476.

Facts

October 2004 - novelty destroying disclosure of "travel pack"

May 2005 - parent standard patent application ("complete application") filed disclosing but not claiming the travel pack

November 2006 - divisional patent application ("complete application") filed claiming the travel pack.

The applicant in the infringement action attempted to defend a cross claim for invalidity on the basis that a complete application for the invention was filed within 12 months of the disclosure, making use of Australia's grace period.

It failed.

Question to be determined

Is "the filing date of the complete application":

a) the filing date of the standard patent application; or
b) the filing date of the divisional patent application?

Answer

The filing date of the divisional application

Reasoning

The relevant wording of the statute dealing with the possibility of filing a patent application in the 12 month grace period is: "...but only if a patent application for the invention is made within the prescribed period". This refers to the divisional patent application.

The regulations dealing with the grace period deal specifically with divisional applications. That dealing would be superfluous if it was not intended that the divisional be the "patent application for which the invention is made".

Comment

That the statute is poorly drafted goes without saying.

It is important to realise that a divisional application is not a "cure all". Often, when prosecution fails, practitioners file a divisional in an attempt to retain patent rights. Divisional applications for innovation patents are also often filed for early enforcement. Be careful if the parent was filed in the grace period.

Hopefully, the Act will be amended.

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