The Full Federal Court’s decision in Coretell Pty Ltd v Australian Mud Company Pty Ltd  FCAFC 54 (Coretell), has finally corrected what many have described as an unexpected ‘quirk’ of the Australian innovation patent system. That ‘quirk’ enabled a patentee of an innovation patent to potentially claim damages for infringements occurring well before the innovation patent was even filed.
In 2013, Middleton J in Britax Childcare Pty Ltd v Infa-Secure Pty Ltd (No 3)  FCA 1019 (Britax) confirmed that the earliest date relief could be obtained for infringement of a standard patent was the date of publication of the application and specification. Middleton J then accepted that an innovation patent, which was filed as a divisional of a standard patent application, held the date of that standard patent application. Relief for infringement of a divisional innovation patent could be obtained as of the ‘date of the patent’, which is defined as the filing date of the parent patent application. This meant that an innovation patent could actually be infringed well before it was even filed and potentially even before the parent patent application was published.
When recently examining the question of when relief from infringement was available to the patentee of a divisional innovation patent, the Full Court rejected the earlier decision in Britax. Rather, the Full Court determined that relief for infringement of a divisional innovation patent was only available from the date of grant of the innovation patent. The Full Court adopted the conclusion that relief for an act of infringement must be preceded by grant of a patent and the publication of the related specification and claims. This is regardless of whether the innovation patent is a divisional of any earlier patent.
The Full Court’s confirmation that infringement relief can only commence from the date of grant of an innovation patent, whether a divisional or not, is a sensible and welcomed correction to Australian patent law.