PATENT RIGHTS
Ben Mott
Most people know that
an invention should be
kept secret until a patent
application is filed, if patent
protection is of interest.
However, what is less well
known is that certain activities
in private can stop you from
getting effective patent
protection, writes Ben Mott.
• Australia, the US and Canada have 12 month
grace periods which may be of assistance if
the invention is not secret; and,
have 12 month periods of grace for publicly
available information, which may be of benefit if
the invention has already been made public.
• Australia now has a 12 month grace period
covering secret use generally.
A peculiarity rectified
The patent system is intended to encourage
inventors to share their inventions by granting
temporary monopolies in those inventions.
There is a trade-off: a monopoly in return for
sharing. The inventions could be products and/
or processes.
In Australia, only secret use in Australia is
prohibited. Conceivably, an inventor might
commercially use their invention in secret in
another country and then obtain valid Australian
patent rights.
An Australian standard patent lasts for up to
20 years from its filing date. During this time,
the owner of the patent has the right to stop
others making, using and selling (etc.) the
invention covered by the patent. In exchange
for this monopoly, the inventor must disclose
the invention so that when the patent is no
longer in force others can then make, use and
sell (etc.) it. The invention must be disclosed in
sufficient detail for a non-inventive worker in
the field to make and use the invention.
If patent protection is of interest:
• It is usually better to file a patent application
sooner rather than later; and,
• Until a patent application is filed, the
invention should be kept secret and not sold,
commercially used or otherwise dealt with
commercially; although,
Secret use is prohibited
In Australia and other jurisdictions, secret
commercial use of an invention before filing a
patent application will destroy patent rights in
the invention. These laws have been developed
to stop inventors in effect extending the term of
their patent by reaping commercial benefit from
the invention before filing a patent application.
It is not always clear whether a use is a
commercial use. In Australia, uses “for the
purpose of reasonable trial or experiment only”
are expressly permitted. Even with this express
permission, the boundary is not as clear as it
might be – most if not all trials and experiments
are ultimately motivated by some degree of
commercial interest.
Australian authority on the distinction
between invalidating secret commercial use
and permissible secret experimental use
indicates that experiments and trials with some
commercial content are permissible if there is
no guarantee of commercial return.
Public disclosure permitted
Whilst it is very much desirable that the
invention be kept secret until a patent
application is filed, Australia, the US and Canada
Until recently, the Australian period of grace did
not excuse secret commercial use. Accordingly,
within the 12 month grace period, secretly using an
invention commercially would destroy patent rights
whereas the same use in public was permitted.
Recently this peculiarity has been removed by
the creation of a 12 month grace period for
secret use generally.
Best to file sooner rather than later
The filing date of the first patent application is
important. Usually it establishes the “priority
date” of the invention. This is the date used to
determine whether the invention qualifies for
patent protection.
By way of example:
• If a competitor releases a product identical
to your invention the day after you file your
patent application, you may well be able to
stop the competitor; whereas,
• If your competitor releases the same
product the day before you file your patent
application, your patent application will be
invalid (aside from some rare exceptions). It
would not be possible to stop the competitor.
Author Ben Mott is a Mechanical Engineer, Patent
Attorney and Principal and Wadeson. He can be
contacted at [email protected] or
(03) 9818 3808.
Govlink I Issue 1 2014
75