for the purposes of a reasonable trial of the invention; and
because of the nature of the invention, it was reasonably necessary for the working to be in public;

that information is to be disregarded during examination when considering novelty or inventive/innovative step.

Application of Section 24

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

Working Before 15 April 2013

The working of the invention must take place within the period 12 months before the priority date of a claim for the invention.

However, the application referred to in sec 24(1) may be either a provisional or complete application and must be filed within 12 months from the start of the first public working of the invention.

Working 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 12 months of the start of the public working of the invention.

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 12 months of the start of the public working of the invention.

In all other cases, the application must be filed within 12 months from the start of the public working of the invention.

Case Law

In Austoft Industries Ltd v Cameco Industries Inc. [1995] APO 65; 33 IPR 251; (1995) AIPC 91-306, the Deputy Commissioner found that the working of the invention was not for the purpose of a reasonable trial.

Austoft’s invention related to machines for harvesting sugar cane. The machine was used to harvest sugar cane on a farm in the presence of a number of people, including employees of Austoft. On the basis of evidence, including:

the perception of certain witnesses that the use of the machine was not part of any trial;
the apparent failure of Austoft to communicate to anyone that the use of the machine was part of a trial; and
the use to which the machine was put;

the Deputy Commissioner concluded that the trial was for the purpose of assessing the commercial acceptability of a new base cutter assembly for the machine. This ‘trial’ was outside the scope of a reasonable trial within the context of the Regulations.

The issue of reasonable trial was also considered (in the context of secret use) in DSI Australia (Holdings) Pty Ltd v Garford Pty Ltd [2013] FCA 132; 100 IPR 19. In this case, the patentee’s (Garford) claims were directed to an apparatus and method for manufacturing multi-strand rock bolts having spaced-apart bulbs.

Garford commenced manufacture of continuous bulbed cable for rock bolts using a ‘prototype’ version of the apparatus. It was subsequently found that the apparatus produced continuous bulbed cable in which a bulb was sometimes missing.

Yates J concluded that the apparatus was only being used for reasonable trial to see whether it could satisfactorily produce continuous bulbed cable and for no other purpose. There was no evidence that, at the time of producing the (faulty) bulbed cable, Garford was engaged in manufacture for sale.