Prior user under s 7 Patents Act 1990 (C'th) will not invalidate a patent if the act did not actually make publicly available all the relevant information necessary to disclose all the essential integers of the impugned claims, according to the Federal Court in a decision handed down 13 March 2015: Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31.

The Full Federal Court has made it clear that prior user attacks cannot rely merely on what could have happened, only on what did happen.

The case involved a patent for a spring assisted blind mechanism - a type of roller blind. At trial a number of the claims were struck down for lack of novelty based on prior user, the evidence in relation to which was that (paras [18], [35]):

  • The internal workings of the prior used RolaShades product could not be ascertained on inspection without disassembling the product;
  • The defendant did not sell any of the product;
  • The defendant did not give the product to any potential customers;
  • There was no evidence that any potential customer was free to handle and disassemble the product or otherwise ascertain the essential elements of the claimed invention;

There was no evidence that anyone did disassemble the product. In a split decision, the Court (Bennett & Yates JJ, Jessup J dissenting) held that the trial judge was wrong to be satisfied in this case that a customer would have 'a general idea of the mechanism' from observation and also wrong to find that 'it does not matter that the [prior disclosed product] was not actually disassembled' as each potential customer had the opportunity of 'a complete examination of the internal componentry of the ... product'.

The majority found that Lord Hoffman in Merrell Dow was right when he said that "Making matter available to the public within the meaning of [the section] ... requires the communication of information. The use of a product makes the invention part of the state of the art only so far as that use makes available the necessary information."

A secret or uninformative use is not sufficient ([47]). It is necessary to determine what information is conveyed ([49], [90]). The disclosure must be an enabling disclosure ([51], [77]). In order to destroy novelty, the information must enable the notional person skilled in the art at once to perceive, to understand and to be able practically to apply the discovery without the need to carry out further experiments ([57]).

Thus, by showing the product to customers in its assembled form, the features that could be discerned only upon disassembly of the product were not made publicly available and could not anticipate the relevant claims ([94]). The trial judge's emphasis on customers' opportunity to disassemble and what could have been done were not enough to amount to anticipation ([95]).

It was important to understand that the relevant question was not whether the RolaShades product was made publicly available ([96]). Similarly, its use in public was not determinative. Failing to recognise this distinction between public availability of the product on the one hand and public availability of the relevant information containing the invention on the other, was key in overturning the trial judge's decision ([97]).

Of course this case expressly left untouched the well-established principle that sale of a product containing the invention will usually anticipate because the buyer can do with it as he pleases and discover the secrets of the invention. (See [98]). But this case raised quite unique facts.