In Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31, the Full Court of the Federal Court of Australia considered in what circumstances the doing of a single act, prior to the priority date of the patent, will destroy novelty under s 7(1)(a) of the Patents Act 1990 (Cth). 

The patent concerned a spring assisted blind mechanism that is relatively easy to operate.  If any reader has had the frustration of trying to retract an old roller blind on a daily basis, you will appreciate the object of this invention!  One of the pieces of prior art relied upon by the alleged infringer to destroy the novelty of the patent was a product called RolaShades.  The Full Court accepted that this product was imported into Australia before the priority date of the patent, and was demonstrated to trade customers in a showroom. 

On appeal, Justice Bennett summarised the requirements for a prior act to defeat the novelty of an invention as follows:

  • The act must have been accessible to at least one member of the public in circumstances where that person would be free in law and equity to make use of the information obtained from it as that person saw fit;
  • The act must have resulted in disclosure of all of the essential integers of the invention;
  • The skilled person must, on inspection of the act, be able to comprehend the complete invention; and
  • The onus lies on the party seeking to rely on the disclosure. 

At first instance and on appeal, every judge agreed that the RolaShades product possessed all of the integers of the patent in suit, but mere display did not communicate that to the public.  The product needed to be disassembled to achieve this, which, on the facts, could have been readily done if requested by the customers.  The judges were effectively split 2:2 on whether this amounted to anticipation, with Justices Bennett and Yates on appeal finding that there was none, while Justice Jessup (dissenting on appeal) and Justice Middleton at first instance found that there was.  Their reasoning is summarised below:

Justices Bennett and Yates – no anticipation – allowing the Appeal

  • Justice Bennett conducted a brief historical review of the case law concerning anticipation.  Her Honour observed that secret or uninformative prior use was not sufficient and the focus is on an enabling disclosure – that is, the information being disclosed must enable the public to work the invention.  On the facts, her Honour did not consider that the act of giving an encased mechanism to another person was an enabling disclosure.  The question is what was actually disclosed, and not what could have been disclosed.
  • Justice Yates considered what information as to the nature of the invention was given by showing the RolaShades product to potential customers.  His Honour concluded that, by only showing an assembled version of the RolaShades product to customers (even if they could have asked to see the internal mechanism), not all of the features of the invention were made publicly available. 

Justices Middleton and Jessup – anticipation

  • At trial, Justice Middleton noted that each person who visited the showroom had the opportunity to view the RolaShades product disassembled.  It did not matter to his Honour that the product was not actually disassembled, or that no sale took place.  The mere conduct of displaying and offering for sale the RolaShades product, in the manner that it was in the showroom, made publically available the necessary information. 
  • In his dissenting judgment on appeal, Justice Jessup did not consider that Justice Middleton was in error.  Implicit in his Honour's reasoning was that the information was 'available' to the customers, even if they did not avail themselves of the opportunity to inspect the internal workings of the RolaShades product.  

Given the differences in approach by four experienced members of the bench, it will be interesting to see how this principle is treated in future cases.