In Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd ([2008] FCAFC 139) the Full Federal Court of Australia gave clarity to the meaning of ‘publicly available’ for the purposes of the novelty provisions of the Patents Act. The relevant provision, Section 7(1), reads as follows: 

“(1) For the purposes of this act, an invention is to be taken to be novel when compared with the prior art base unless it is not novel in the light of any one of the following kinds of information, each of which must be considered separately: 

(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act.”

The Full Federal Court held that the question of whether a claimed invention has been made publicly available will be answered by considering whether the relevant information was made available to a member of the public who was free in law and equity to make use of it. 

The information must be such as to disclose all of the essential features of the invention and to enable the skilled person “at once to perceive, to understand and to be able practically to apply” the information, without the need for further experimentation, to arrive at the claimed invention. 

It follows that the question is not whether the information was availed of, but rather whether the information was made available without restraint on its use. In addition, it is immaterial whether the information was made available to a few or several people. Availability to one person absent confidentiality restrictions will be sufficient to destroy novelty. An argument that de minimis use should be held not to destroy novelty was not made out on the evidence, which showed that the use was more than de minimis

The Full Federal Court accepted that there will be circumstances where “accidental, experimental or de minimis” use will not be novelty defeating. 

For further information on this topic please contact Anthony Muratore at Gilbert & Tobin by telephone (+61 2 9263 4000) or by fax (+61 2 9263 4111) or by email ([email protected]).