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The Full Federal Court has overturned a controversial decision of the Federal Court that denied a divisional patent application the ability to rely on the filing date of its parent application when claiming the benefit of the grace period. The grace period in Australia provides that disclosures within 12 months “before the filing date of the complete application” are disregarded when determining the validity of a patent.
Click here to view our previous alert on the Federal Court decision. The first instance decision had potentially serious implications for divisional applications relying on the grace period, and the Full Court was unanimous in overturning what was seen by many patent professionals as an anomalous result.
The decision in Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84 was purely one of statutory interpretation. Emmett, Bennett and Jagot JJ were asked whether, in the context of a divisional patent application, the words ‘the filing date of the complete application’ in r 2.2(1A) of the Patents Regulations 1991 (Cth) (“Regulations”) meant:
- the filing date of the original or “parent” application, or
- the filing date of the divisional application.
All three judges held that the words ‘the filing date of the complete application’ in r 2.2(1A) of the Regulations meant the filing date of the parent application, not the filing date of the divisional application. This interpretation was also the one advanced by the Institute of Patent and Trade Mark Attorneys, who intervened in the proceeding.
Mont Adventure had disclosed their invention, by publicly offering it for sale, less than twelve months before filing a complete patent application. This disclosure was, by virtue of the grace period, not considered in assessing the novelty of the parent patent application. Mont Adventure then filed a divisional innovation application more than 12 months after the disclosure. Thus the meaning given to r 2.2(1A) was crucial for the validity of Mont Adventure’s innovation patent.
All three judges agreed that the clause was poorly drafted and the question was one of statutory interpretation. They all looked at the purpose of the Patents Act 1990 (Cth) (“Patents Act”) and the Regulations as a whole and found that they provided a scheme which linked a number of dates for a divisional patent application with that of its parent application, including the priority date for eligible claims and the date of the patent. The judges’ preferred construction:
[would give] the words a meaning which they are reasonably capable of bearing in a manner which achieves the primary object of statutory construction, that is, consistency with the language and purpose of all provisions of the statute on the basis that they are intended to give effect to harmonious goals (at [98] per Jagot J with whom Emmett and Bennett JJ generally agreed).
The law regarding divisional patent applications and the grace period is again consistent with the patent profession’s general understanding of the legislation. It is clear that a divisional patent application can rely on the grace period afforded by s 24 of the Patents Act and the Regulations, where its parent application is entitled to do so.