Key points

  • Position on patent grant periods restored.
  • IPTA applies for leave to intervene in case in support of Mont Adventure Equipment's position.
  • Grace period is now calculated from the filing date of the complete specification for the parent application, not the divisional, and is a welcome decision for all divisional patent owners.

A unanimous decision of the Full Federal Court in Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84 has restored the position on grace periods for divisional patents. Justice Stone's original decision in October last year, as reported in an earlier eAlert!, had the effect that a divisional patent was not able to claim the benefit of the "grace period" that was afforded to its parent patent from before the date of filing.

This meant that the owner of a divisional patent application would have risked a finding of invalidity of the divisional patent if it used or disclosed the invention in the 12 month period prior to the filing of the original patent. The decision was understandably alarming at the time.

The latest decision is the first time that the Institute of Patent and Trade Mark Attorneys of Australia (IPTA) has applied for leave to intervene in a case in which it was not directly involved. IPTA's submissions, in support of Mont Adventure Equipment's position, were influential on the judges and showed the importance of the decision to the protection of patents in Australia.

The Full Federal Court decided the case as a matter of statutory interpretation because of the ambiguity in this area of patent law, stating that the "drafting of the [Patent] Regulations is not a model of clarity." Although all three judges wrote separate judgements, they all essentially held elements of the following: that the reference to the "the complete application" in regulation 2.2(1A) means the initial standard (or "parent") patent application that "first discloses the invention" rather than each divisional application.

In interpreting the provisions, the judges referred to the Patents Act 1990 (Cth), Patents Regulations, Explanatory Statements and contents of each legislative amendment that has resulted in the current consolidated law to infer that "the intention was to give divisional applications the same protection in the same circumstances as the parent application".

The result of the latest decision is that the grace period is now calculated from the filing date of the complete specification for the parent application, not the divisional, and is a welcome decision for all divisional patent owners.

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