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5.6.4.1 Prior Art - What is Included (Definition From the Act, Publicly Available, Exclusions, Grace Period)

Date Published

Key Legislation:

Patents Act:

  • s7 Novelty, inventive step and innovative step  
  • s24 Validity not affected by making information available in certain circumstances
  • Schedule 1 Dictionary

Patents Regulations:​​​​​​​

  • reg 2.2 Information made publicly available--recognised exhibitions
  • reg 2.2A Information made publicly available--learned societies
  • reg 2.2B Information made publicly available--reasonable trial of invention
  • reg 2.2C Information made publicly available--other circumstances
  • reg 2.2D Information made publicly available without consent--period

Referenced Acts:

  • s2B Acts Interpretation Act

Other International Treaties and Conventions

  • Article 11 Paris Convention
  • Article 1 Convention Relating to International Exhibitions
  • Article 6 Convention Relating to International Exhibitions

Prior Art Information

For the purposes of examination, the prior art is restricted to the following (defined in Schedule 1):

  • information in a document that is publicly available before the priority date, anywhere in the world;

  • information made publicly available before the priority date through doing an act, anywhere in the world; and

  • information contained in certain Australian patent specifications published on or after the priority date of the claim under consideration (see Whole of Contents).​​​​​​​

There is no time limit operating to exclude a document from consideration because it is 'too old'. This is in contrast to the '50 year rule' formerly provided by s158 of the 1952 Act.

Note: "Doing an act" includes making an oral disclosure.

Meaning of "Document"

Defined in Acts Interpretation Act s.2B

"Document" includes:

  • any paper or other material on which there is writing;

  • any paper or other material on which there are marks, figures, symbols or perforations having a meaning for persons qualified to interpret them; and

  • any article or material from which sounds, images or writings are capable of being reproduced with or without the aid of any other article or device. For example, tape recordings, CDs, floppy disks, computer databanks and photographs.

Publicly Available

Information that is "publicly available" is information that the public has, or material that the public has a right to inspect. It is sufficient that the information is available to a single person, given the person can use the information freely without an obligation of confidence.

If a person seeks to find a document on the basis of certain information and the document is not located, it is nevertheless still publicly available.

A document is publicly available provided it is publicly available somewhere in the world. Thus, for patent specifications of other countries, examiners can take the publication date in the country of origin (as shown on the published specification) as the date of becoming publicly available.

Legal Principles and relevant case law

For case law on publicly available information, see:

  • Gadd v Mayor of Manchester (1892) 9 RPC 516 at page 527;

  • Fomento v Mentmore (1956) RPC 87 at page 105; and

  • Monsanto (Brignac's) Application [1971] RPC 153 at page 159.

For case law on seeking a document, but unable to find it, see:

  • Nicator AB's Applications 7 IPR 504; [1986] APO 33.

Resiling from Acknowledged Prior Art

It is permissible for an applicant to delete a reference to acknowledged prior art from the specification during examination. However, such a deletion may not in itself overcome a novelty objection corresponding to the acknowledged prior art if that prior art was available before the relevant priority date. There may be situations where evidence can establish that an error was made in the specification in relation to acknowledged prior art, which may lead to overcoming the novelty objection.

Legal Principles and relevant case law

In Gerber Garment Technology v Lectra Systems (1995) FSR 492, it was stated:

"In Sonotone Corporation v Multitone Electric Co. Ltd (1955) 72 RPC 131, at 140 however, Sir Raymond Evershed M.R., speaking obiter, expressed the view that such a recital constituted an admission which must necessarily carry great weight, but that it did not estop the patentee or debar him from leading evidence to contradict it.

In my judgement this is a correct statement of the law."

See also Mobil Oil Corporation's Application [1975] AOJP 2323 at the paragraph bridging pages 2324 and 2325.

Exclusions

When deciding whether an invention is novel or involves an inventive/innovative step, certain information made publicly available, through any publication or use of the invention, is to be disregarded. Information to be disregarded includes:

  • the publication of the invention at a recognised exhibition;

  • the publication of the invention in relation to a learned society;

  • the public working of the invention for the purposes of a reasonable trial; and

  • any publication or use of the invention within 12 months before the filing date of the complete application ("grace period").

Grace Period

Section 24(1) provides that for the purposes of deciding whether an invention is novel or involves an inventive/innovative step, any information (not limited to the publication or use of the invention) made publicly available by, with or without the consent of the nominated person or the patentee, or their predecessor in title (in particular, the inventor), within 12 months before the filing date of a complete application, must be disregarded. This 12 month period is referred to as the "grace period".

The information to be disregarded includes information published in a P, X, or E category “whole of contents” citation.

In the case of unauthorised disclosures (information made publicly available without the consent of the nominated person or the patentee, or their predecessor in title), there are no special provisions for Convention applications. Any applications that seek to invoke the Grace Period based on an unauthorised disclosure (s24(1)(b)) are to be referred to the Assistant General Manager (Oppositions) via a supervising examiner.

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) and reg 2.2C in the form of a note in the report.

For divisional applications, the examination practice is different (see 5.6.10.5 Issues specific to the Examination of divisional applications).

Legal Principles and relevant case law

Cases that confirm that information in whole of contents citations can be disregarded if the information meets the Grace Period requirements include:

  • Cytec Industries Inc v Nalco Co [2021] FCA 970

  • Biogen Idec MA Inc. [2014] APO 25; and

  • Rozenberg​​​​​​​ &​​​​​​​ Co Pty Ltd v Velin-Pharma A/S [2017] APO 61.​​​​​​​

Exhibitions

There are two types of "recognised exhibition" where inventors may exhibit, use or show their inventions without invalidating their subsequent patent application.

Under reg. 2.2 these are:

  • an official or officially recognised international exhibition; and

  • an international exhibition recognised by the Commissioner.

Publication of the invention that occurred during the exhibition, at which the invention was shown or used, can also be disregarded. For example, an advertisement of the invention in a newspaper made during the recognised exhibition would be considered an appropriate publication. The publication does not need to occur at the exhibition. However, brochures disclosing the invention and publicly distributed before the exhibition even though they may be in connection with the exhibition, would not fall within this requirement.

Official or Officially Recognised International Exhibition

An official or officially recognised international exhibition is one within the meaning of Article 11 of the Paris Convention, or Article 1 of the Convention Relating to International Exhibitions done at Paris on 22 November 1928.

An exhibition will be official if it is organised by a state or other public authority and be officially recognised if it has been recognised by such a state or authority. Additionally, the exhibition has to be international, that is, it must include the exhibition of goods from another country.

An exhibition will also be an official or an officially recognised international exhibition if it has a principal purpose of educating the public by demonstrating the progress achieved in one or more branches of human endeavour or show prospects for the future. It must also be international by inviting more than one State to take part.

The convention also provides, in Article 6, for the registration of the exhibition.

Such exhibitions are organised on a government-to-government basis. The protection afforded to inventors for the display of their inventions is generally recognised internationally. Expo 88, which was held in Brisbane, is an example of an exhibition that was officially recognised under the corresponding provisions of the 1952 Act (1986) 56 AOJP 1022).

International Exhibition Recognised by the Commissioner

International exhibitions recognised by the Commissioner are recognised by means of a notice published in the Official Journal before the beginning of the event. An exhibition may, for example, be officially recognised upon an application being made to the Commissioner by the organiser of the exhibition.

However, unlike the officially recognised international exhibitions, the protection afforded in Australia by the Commissioner recognising the exhibition will not necessarily be recognised in other countries. Thus, while inventors may be able to obtain a valid Australian patent after exhibiting their invention, exhibition of their invention at the exhibition may invalidate a patent in most other countries.

The procedures for obtaining recognition of an exhibition are provided on the IP Australia website (Patents Displayed at International Exhibitions).

Requirements that must be met to have a publication at an Exhibition disregarded

To have a publication at an exhibition be disregarded under s24, the following requirements must be met:

Exhibition before 15 April 2013:

  • the application may be either a provisional or a complete application;
  • 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 showing or use of the invention at the recognised exhibition.
  • In all other cases, the application must be filed within 6 months of the first showing or use of the invention.
  • At the time of filing the application, the applicant must file a notice stating that the invention has been exhibited.
  • Prior to the complete specification in respect of a standard patent application becoming open to public inspection, or within 6 months of the filing date of the complete specification of an innovation patent application, the applicant must file a statement issued by the authority responsible for the exhibition in which:
    • the invention and the exhibition are identified; and
    • the date of the opening of the exhibition is given; and
    • where the first disclosure of the invention during the exhibition did not take place on that date - the date of that disclosure.

Exhibition on or after 15 April 2013:

  • the application must be a complete application;

  • where the application claims priority from a basic or provisional application, it must be filed within 12 months of the basic or provisional application, which in turn must be filed within 6 months of the showing, use or publication of the invention at the recognised exhibition; and

  • where the application does not claim priority from a basic or provisional application, it must be filed within 12 months of the showing, use or publication of the invention at the recognised exhibition.

Legal Principles and relevant case law

The scope of the phrase ‘official or officially recognised international exhibition’ is discussed in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd (2007) FCA 1869; 74 IPR 398. Although the legislation relevant to this case was the Designs Act 1906, the decision is applicable to interpretation of the Patents Act.

An exhibition with even a small foreign presence of exhibitors can be considered an international exhibition, as discussed in Chiropedic Bedding Pty Ltd v Radburg Pty Ltd (2008) FCAFC 142; 79 IPR 1.

A publication made before a recognised exhibition cannot be disregarded, as discussed in Steel & Co. Ltd's Application [1958] RPC 411. Although the legislation relevant to this case was the Designs Act 1906, the decision is applicable to interpretation of the Patents Act.

Learned Societies

Information is to be disregarded during examination when considering novelty or inventive/innovative step if the publication of an invention occurs because a paper (or its abstract) was:

  • read before a learned society; or

  • published by, or on behalf of, a learned society.

If the publication occurs through 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 the Grace Period may apply.

Definition of Learned Society

There is no complete definition of what constitutes a "learned society". However, as a guide, "learned society" is any non-commercial group of people 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 is not 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.

Examples of established bodies that fall into the category of learned societies include:

  • 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;

  • Australian Medical Association; and

  • Institute of Electrical and Electronics Engineers (IEEE).

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.

Requirements that must be met to have a reading or publication before a learned socieity disregarded

In order to receive the benefit of s24, 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 s24(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 s24(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.

Legal Principles and relevant case law

If the paper has been published, it should be "under the auspices of and finally be the responsibility" of the learned society, as stated in Ralph M. Parsons Co. (Beavon's) Application [1978] FSR 226, and so if the publication occurs via outsiders, it will not be considered published by the society. Parsons also provides guidance on the definition of a “learned society”.

Ethyl Corporation's Patent [1963] RPC 155 states, as obiter, that abstracts of papers that are read to a learned society are considered to be papers that can be disregarded.

The following cases discuss examples of “learned societies”:

  • Western Mining Corp Ltd v Western Minerals Technology Ltd (2001) APO 32;

  • Work Cover Authority of New South Wales v Bitupave Limited [2000] NSWIRComm 50;

  • David McNicol v Australian Capital Territory Health Authority S.C. No. 945 of 1986 Defamation (1988) ACTSC 55; and

  • Kozo Miyake v Caterpillar Inc. (2000) APO 3.

Reasonable Trial

Information is to be disregarded during examination when considering novelty or inventive/innovative step where an invention has been worked in public:

  • 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.

Requirements that must be met to have a public working of the invention disregarded

To have a public working of the invention disregarded under s24, the following requirements must be met:

Public 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 s24(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.

Public Working On or After 15 April 2013:

  • the application must be a complete application;

  • where the application claims priority from a basic or provisional application, it must be filed within 12 months of the basic or provisional application, which in turn must be filed within 12 months of the start of the public working of the invention; and

  • where the application does not claim priority from a basic or provisional application, it must be filed within 12 months from the start of the public working of the invention.

Legal principles and relevant 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. 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 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 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.

Amended Reasons

Amended Reason Date Amended

Reference added to Federal Court in Cytec Industries Inc v Nalco Co [2021] FCA 970 which affirmed that grace period also applies to information published in a “whole of contents” citation.

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