8.4.3.1 Grace Period

Key Legislation:

Patents Act:

• s24(1) Validity not affected by making information available in certain circumstances  

Patents Regulations:

• reg 2.2 Information made publicly available--recognised exhibitions
• reg 2.3 Divisional applications--period

On this page

• Overview
• Examination Practice

Overview

Section 24(1) provides that for the purposes of deciding whether an invention is novel or involves an inventive/innovative step, any information made publicly available by, with or without the consent of the nominated person or the patentee, or their predecessor in title (in particular including the inventor), by publication or use of the invention within 12 months before the filing date of a complete application, must be disregarded (see also reg 2.2(1A) and reg 2.3(1A)). This 12 month period is referred to as the "grace period".

However, this exclusion only applies to information made publicly available on or after 1 April 2002.  Therefore, any document published prior to this date can be used for the purpose of deciding whether an invention is novel or involves an inventive/innovative step, even if the filing date of a complete application was within 12 months from this publication date.

Note: Under the provisions of s24(1), the information made publicly available includes information published in a “whole of contents” citation irrespective of whether the citation was published before or after the filing date of the application (i.e. it applies to both P, X and E category citations) (see Biogen Idec MA Inc. [2014] APO 25 and Rozenberg & Co Pty Ltd. v Velin-Pharma A/S [2017] APO 61).  This approach was also recently affirmed by the Federal Court in Cytec Industries Inc v Nalco Co ​​​​​​​[2021] FCA 970.

Examination Practice

Examiners should not rely on the grace period in the first instance to disregard a publication for novelty or inventive/innovative step purposes, as they will not be aware of all the facts relevant to the case.  However, they should be aware that it may be invoked in rebuttal of such an objection.  In the unusual situation of a private applicant, examiners may draw the applicant’s attention to the existence of s24(1), reg 2.2(1A) and reg 2.3(1A) in the form of a note in the report.

For divisional applications, where information in the divisional was disclosed in the original (parent, etc) application, for the purposes of s24(1) the filing date of the divisional application is taken to be the filing date of the original application (see Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84; 81 IPR 505).

In Mack Innovations (Australia) Pty Limited & Anor v Rotorco Pty Limited & Anor [2010] QSC 138; (2010) 239 FLR 79 McMurdo J stated that the meaning of a ‘patent application’ in s24(1)(b) is not limited to a complete application, but includes a provisional application.  This was significant in that case, which dealt with a public working of the invention under reg 2.2(2)(d).  However, for the purposes of reg 2.2(1A), the publication or use of the invention must be within 12 months before the filing date of the complete application.