If the paper has been published, it should be "under the auspices of and finally be the responsibility" of the learned society (Ralph M. Parsons Co. (Beavon's) Application (1978) FSR 226). Thus, if the publication occurs through the medium of outsiders, such as journalists, who were present at the meeting at which the paper was read, this will not be regarded as publication by the society. However, in these circumstances, if it can be demonstrated that publication occurred without consent, then sec 24(1)(b) may apply (see 2.4.4.6.4 Unauthorised Disclosures). Note that publication by a society of an abstract of a paper is considered to be a publication of a paper (see Ethyl Corporation's Patent [1963] RPC 155).

Definition of Learned Society

There is no complete definition of what constitutes a "learned society". However, the judgement in Parsons supra, provides some guidance. This suggested that "learned society" is apt to describe any non-commercial body of persons seeking to promote and organise the development of specific subjects, by the provision of a forum for the exchange and discussion of ideas and the dissemination of information, usually through the publication of its proceedings.

A government department or university would not be considered to be a learned society, even if it organises seminars or conferences, etc. for disseminating technical information. In addition, while the attendees at a seminar or conference could conceivably form a learned society, merely forming for the duration of a single conference does not establish it as such. Furthermore, from Parsons supra, a society can have other objectives such as social and sporting pursuits.

In Western Mining Corp Ltd v Western Minerals Technology Ltd [2001] APO 32, the hearing officer mentioned the cases of Work Cover Authority of New South Wales v Bitupave Limited [2000] NSWIRComm 50 and David McNicol v Australian Capital Territory Health Authority S.C. No. 945 of 1986 Defamation [1988] ACTSC 55, which referred to learned societies. These cases indicated the following established bodies fall into the category of learned societies:

Royal Society of Chemists;
Combustion Institute;
International Association for Fire Safety Science;
Research Committee for the Fire Code Reform Centre (Building Code of Australia);
Royal Australian College of Surgeons;
Australian Orthopaedic Association;
Orthopaedic Research Society;
Connective Tissue Society of Australia and New Zealand;
Australian Society of Orthopaedic Surgeons; and
Australian Medical Association.

In Kozo Miyake v Caterpillar Inc [2000] APO 3, the hearing officer found that the Institute of Electrical and Electronics Engineers (IEEE) was a learned society, and that publication of a paper that had been presented at the IEEE/RSJ International Workshop on Intelligent Robots was not to be taken into account when assessing the novelty or inventive step of the application.

Application of Section 24

In order to receive the benefit of sec 24, the following requirements must be met:

Reading or Publication Before 15 April 2013

The paper must be written by the inventor and, in the case of publication by or on behalf of a learned society, published with the inventor’s consent.

The application referred to in sec 24(1) may be either a provisional or complete application and must be filed within a certain period.

Where the application claims priority from a basic application, it must be filed within 12 months of the basic application, which in turn must be filed within 6 months of the first reading or publication.

In all other cases, the application must be filed within 6 months of the first reading or publication.

Reading or Publication On or After 15 April 2013

The application referred to in sec 24(1) must be a complete application and must be filed within a certain period.

Where the application claims priority from a basic application, it must be filed within 12 months of the basic application, which in turn must be filed within 6 months of the reading or publication.

Where the application is associated with a provisional application, it must be filed within 12 months of the provisional application, which in turn must be filed within 6 months of the reading or publication.

In all other cases, the application must be filed within 12 months of the reading or publication.