[2009] FCAFC 8414 July 2009

Most will know that the Australian patent system provides for a grace period whereby one may file a complete application within 12 months of one’s own disclosure and have that disclosure disregarded in the assessment of novelty and inventive step. What was at issue in this appeal decision1 was whether the trial judge was correct in his view that the grace period should not apply to an Innovation patent in circumstances where:

i.the Innovation patent was filed as a divisional application more than 12 months from the relevant publication date, and

ii.the parent patent of the divisional was filed within 12 months from the publication date.

In like circumstances, but where the divisional application is an Australian Standard patent, the grace period would apply.

In the decision it was unanimously held that the appeal should be allowed and that in the circumstances of the appeal, the grace period should apply. The end result was that appellant’s own commercialisation of the invention the subject of the Innovation patent claims was held not to invalidate those claims.

The decision underscores the intention of the Australian legislature that the Innovation patent system – which as explained in the recent appeal decision in Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81 may potentially provide patent monopoly rights for ‘obvious’ inventions - is to be imbued with many of the benefits applicable to Australian Standard patents. Those seeking patent protection and those seeking to avoid patent infringement must now take note.