HAVE I PRIOR PUBLISHED MY INVENTION
In Australia as in most countries, publication/disclosure of an invention before filing a patent application is generally a barrier to validity of the subsequently filed patent application. In the eyes of the law, publication by anybody including the inventor, destroys the "brand spanking" new quality which is required to enable valid patent protection to be obtained. However in many countries there are exceptions and Australia is no different.
In Australia there are certain instances where a publication made before a patent application is filed does not constitute a barrier to your right to obtain valid patent protection.
To assist your understanding I have set out below in non- legal jargon some typical circumstances which may arise. These "publication barriers" must be considered separately. If you are concerned about publication of your new invention you may be able to jump one of the publication hurdles which are mostly time limited, to achieve patentable status.
PUBLICATION HURDLES
Prototypes, trial and secret use - THE PROTOTYPE HURDLE
1. I had an idea for a new product but I'm wasn't sure it would work so I made a prototype to check it out. I did this in secret without showing anybody.
-hurdle cleared- proceed to patent office. (no time limits apply)
1a. I had the prototype or parts thereof made by an outsider and I told them about my invention. My disclosure to them was confidential.
-hurdle cleared- proceed to patent office. (no time limits apply)
1b. I had the prototype or parts for it made by another person to whom I explained my invention. My disclosure to them was not confidential.
-hurdle possibly cleared- proceed to patent office with a complete application, and only if this disclosure occurred within the last 12 months
1c. I had the prototype made by another person to whom I explained my invention so they could put it together and the only way I could test it was in public.
-hurdle possibly cleared- proceed to patent office IF the public testing occurred within the last 12 months
1d. I had parts for the prototype made up by outsiders and I told them about my invention. My prototype worked like a treat and I have been using it commercially for years. . FAIL (PRIOR SECRET COMMERCIAL USE INVALIDATES)
1e. I secretly made my prototype, it worked a treat and I have been using it commercially for years without showing anybody.
FAIL (PRIOR SECRET COMMERCIAL USE INVALIDATES)
I've already sold some, THE GRACE PERIOD HURDLE
2. I had an idea which I developed and I started using and/or selling product to check out its market acceptance.
-hurdle possibly jumped- proceed to patent office with a complete application, ONLY IF all disclosure by publication or use occurred within the last 12 months
My invention was made public by another, THE UNAUTHORISED PUBLICATION HURDLE
3. I had a sample made by another person who published the idea without my consent.
-hurdle possibly jumped- proceed to patent office IF publication occurred within the last 12 months
I've made improvements, HAVE I REALLY PUBLISHED IT? HURDLE
4. I told others about my invention. My disclosure to them was not confidential. However since then I have made significant improvements to my invention.
-hurdle possibly jumped- proceed to patent office if improvements are at least innovative (no time limits apply)
There is also provision for a 6 month time limit following publication at a recognised exhibition or in a paper for a learned society but these rarely apply, and provision for disclosure to government authorities.
The above circumstances are by no means exhaustive and no two circumstances are ever identical. The above is given only so you may have a better insight to the Australian position. Further complications arise when the inventor works for a business or company. If you find yourself wondering about the availability of patent rights after publication, please seek professional advice.
NEVER INTENTIONALLY WORK TO THE ABOVE DEADLINES AS THEY MAY NOT APPLY TO YOUR PARTICULAR CIRCUMSTANCE and NEVER ASSUME YOU HAVE NO CHANCE. ALWAYS SEEK ADVICE.
The grace period provisions are also offset by the non-infringement provisions for a copier who began exploiting the invention before the complete patent application was filed. Thus publication, before filing and within the grace period, could expose you to the possibility of sharing your "exclusive" market with a copier. Still that may be better than sharing it with many traders.
Please also note that it is not necessary to advise the Patent Office of a prior publication at the time of filing but you may have to rely on it in due course to overcome an objection raised by the patent office or a Court, so keep good records. All the other potential obstacles remain, such as, is it a manner of manufacture?, is it novel and inventive or innovative?, is it useful?, or is it specifically excluded by the Patents Act?.
While the generous publication allowances in the Australian Patents Act may assist you in Australia they may defeat your ability to obtain valid protection outside Australia. I recommend that if possible, you play safe and file an application in Australia before you publish your invention as many countries define a patentable invention as one which is absolutely new throughout the world.
John Pizzey
The relevant sections of the Patents Act 1990 outlined above are, Sections 9, 18 and 24 these can be viewed on the web @ PATENTS ACT 1990 - AustLII.
These sections cross reference to Regularions 2.2 and 2.3 for definitions of prescribed circumstances and prescribed periods. These can be viewed @ PATENTS REGULATIONS 1991 - AustLII