IP Spotlight September 15

I S AN ADVERT I SEMENT PR IOR TO THE PR IOR I TY DATE A SECRET USE OF AN I NVENT ION? In Australia, an invention may only be granted a patent if, at the priority of the patent application, the invention is novel and possesses an inventive step over the disclosure of the prior art. As is well known, a public use or disclosure by the applicant or inventor of the invention prior to the filing of the patent application will cause the invention to be not novel and therefore, not entitled to be granted a patent. Such use of the invention prior to filing the patent application also includes the concept of secret use, where the use of invention is conducted secretly by the applicant. Such use of the invention in secret may result in a longer monopoly than the statutory 20 year period provided by patent laws, since the applicant may enjoy a period of de facto monopoly through the secret use before the priority date. This is seen as a breaking of the patent bargain where the applicant is granted a monopoly right in the invention, in return for meeting the corresponding obligation of the public disclosure of the invention. However, the question of whether advertising an invention for sale prior to the priority date of a patent application has not, until now, been addressed in Australia. The Australian Federal Court decision of Southern Cross Mining Services Pty Ltd v Mickala Mining Maintenance Pty Ltd [2020] FCA 1064 (27 July 2020) addressed such a question.

As a result, the patentee is said to have enjoyed a period, before the filing of the patent application, during which it has derived a commercial benefit of placing an advertisement for the sale of products with the object of bringing about a sale of products embodying the invention as claimed without disclosing the essential integers of the claims for the invention. Thus, the patentee was provided with a de facto extension of the patent term by securing private advantage without the corresponding public disclosure as the price of the grant of the monopoly [emphasis in original]. Although it was not explicitly argued by Mickala, the main contention appeared to be that, by not identifying all the essential features of the invention in the advertisement, that SCM engaged in concealment of those essential features, thus enlivening the “secret use” provision available under section 18(1A)(d) of the Patents Act 1990 that

Southern Cross Mining Services Pty Ltd (SCM) filed and was granted Australian innovation patent No. 2013100095 for a low voltage LED “Lighting Tower”. The patent application claims an earliest priority date of 30 January 2013 and was certified on 28 March 2014. SCM commenced patent infringement action against Mickala Mining Maintenance Pty Ltd (Mickala). In response, Mickala file proceedings against SCM for revocation of the patent. In an application to amend their grounds for pleading for revocation of the patent, Mickala has sought to test the bounds of secret use in Australia against the patent. In their application, Mickala identified an advertisement by SCM published in a trade journal on 8 January 2012 (more than 12 months prior to the priority date of the patent) and argued that the advertisement listed by SCM amounted advertisement was to bring about a sale of one or more lighting towers made in accordance with the alleged invention. The advertisement was argued by Mickala to embody all the essential features of the invention (even though these were not disclosed in the advertisement) merely by touting the virtues of the lighting tower in the advertisement, at 64-65: The pleaded facts are that Southern Cross secretly used the pleaded invention by causing the advertisement to appear in the AMSJ on or before 8 January 2012 and the object of so placing the advertisement was to bring about a sale of products (one or more lighting towers) made in accordance with the pleaded invention (that is, embodying the essential integers). to secret use of the invention in Australia since the object of the

the invention is not a patentable invention and the patent must be revoked.

BRINGING SECRET USE INTO THE L IGHT Secret use in Australian patent law

HOW I S SECRET USE DEF I NED

The relevant “use” engaging the statutory conception of “not secretly used” in section 18(1A)(d) is understood as taking a step from which it can be concluded that the patentee has, before the priority date, “reaped commercial benefit from what was done before the priority date”.

The following article considers a recent Australian Federal Court decision concerning secret use as a ground of patent revocation in Australia.

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