Earlier, the Australian courts were asked consider the meaning of “the filing date of the complete application” in clause 2.2(1A) of the Patents Regulations 1991 in the context of a divisional application. (Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476)

In the case at hand, the Applicant, Mont Adventure, filed a complete application for a standard patent. On 22 November 2006 and with the aim of obtaining immediate patent rights to commence infringement proceedings against the Respondent, Mont Adventure filed a complete application for an innovation patent as a divisional application of the standard patent application and also filed request for expedited examination.

Prior to filing the standard patent application, Mont Adventure’s products were offered for sale to the public.

Section 24(1)(a) of the Patents Act provides a grace period if there was a publication or use of the invention within 12 months before the filing date of the complete application.

The issue before the court was whether for the purpose of determining the validity of the Innovation Patent, the filing date of the complete application within the meaning of clause 2.2(1A) of the Patent Regulations was:

(a) the filing date of the complete application for the Standard Patent Application; or
(b) the filing date of the complete application for the Innovation Patent?

The earlier court held that the “complete application” to which cl 2.2(1A) refers is the complete application for the Innovation Patent and therefore the information made publicly available by the sale of products could be taken into account in determining whether the invention claimed in the Innovation Patent is novel or involves an innovative step.

Now, the appeal court has upheld the patentee’s appeal. The appeal court has unanimously found that the continuation/divisional should receive the same grace period benefits as the parent application.Rest easy, continuations/divisionals can now be validly derived from a timely filed parent application.

The appeal decision can be viewed here:  Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2009] FCAFC 84 (7 July 2009).

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