IP Spotlight September 15

Therefore, in summary, when submitting arguments that a patent is susceptible to revocation by virtue of being secretly used prior to the priority date, it is essential to: – – identify that the actual commercial benefit obtained by the patentee rises to the level of an extension of the patent monopoly – – that the prior use was use of the invention “as claimed”, taking all the essential features of the claims – – establish that the prior use of the invention was kept secret by deliberate concealment of the use by the patentee. Prior secret use of an invention is neatly Beecham Group Ltd [1974] AC 646] of this matter, discussed by Greenwood J here at [70] & affirmed at [83], being where the inventor has reaped a commercial benefit from a de facto monopoly owing to his or her concealment of the essential features of the invention … “Concealment gives rise to the de facto monopoly which enables the commercial benefit to be extracted or reaped : Greenwood J at [83]. Please contact Wrays should you have any questions regarding the operation of secret use as a ground of patent revocation in Australia. summed up by Lord Diplock’s discussion in [ Bristol‑Myers Co v

However, Mickala did not present that argument in their pleadings or oral submissions and, also, did not make any pleadings as the commercial benefit obtained by SCM from the advertisement prior to the priority date of the patent. WAS THERE PR IOR SECRET USE? Without any arguments being presented by Mickala of the actual commercial benefit obtained by SCM from the advertisement, nor any submissions that withholding the details of the essential features of the invention from the advertisement equated to deliberate concealment by SCM, Mickala’s pleadings as to prior secret use of the invention by virtue of the advertisement were ultimately rejected and the application to amend the revocation pleadings were refused. Greenwood J left open the possibility for Mickala to revert to the court with revised pleadings directed to Greenwood J’s observations in the judgement including that “using an invention as claimed, before the priority date, so as to obtain or extract a commercial benefit from the exercise of a de facto monopoly (as those concepts are understood according to the authorities), might be capable of being pleaded where a step was taken engaging a public act, but

“ 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. ”

SCM also mused that, as affirmed by Azuko, since making a patented article prior to the priority date was not an extension of the patent term, it was difficult to see how placing an advertisement in relation to the invention could be regarded as having “secretly used” the invention. In reply, Mickala argued that, to the extent SCM has not disclosed such integers (or others) of the claims, then SCM has kept aspects of the invention “secret” within the understanding of the term “secretly used” in s ection18(1A)(d) in the patent area before the priority date in relation to innovation patents, and therefore the patent ought to be revoked. COMMERCI AL BENEF I T? Greenwood J discusses at [114] that the commercial benefit which could possibly be obtained by SCM was that sales would be able to be made after the priority date (it was not suggested that SCM made sales before the priority date) sooner than it would have made those sales, had the advertisements been placed on or after the priority date.

patentee’s deliberate concealment of the essential features of the invention – – The concealment must be an act of deliberate concealment. Therefore, to seek revocation of a patent, it must be precisely particularised in the pleadings as to the commercial benefit obtained by the patentee by using the invention in secret prior to the filing date of the patent application. In the present application, Mickala argued that the placement of the advertisement, coupled with the stated object of bringing about sales, was in fact the equivalent of a sale (despite that no actual sales were alleged to have been made) prior to the priority date and thus constituted secret use of the invention. SCM’s position in response to the advertisement is understood to be that the advertisement does not disclose “all the inner workings of the machine” such as whether the alternator of the Lighting Tower is a low voltage alternator; whether the low voltage alternator has a voltage output of less than 50V; whether such an alternator is connected directly to a shaft of the engine; and other such matters.

Prior discussion of secret use by Gyles J in Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 1079; (2001) 52 IPR 75 has established that making and stockpiling a patented invention prior to the priority date of the patent, does not constitute secret use of the invention since it does not amount to any de facto extension of the patent term. This decision by Greenwood J re- examines the nature of the term “secret” in “secret use” and affirms that the term “secretly used” means deliberately concealed which is consistent with the dominant understanding of the term “secret” and the derivative adverb “secretly”. Therefore, to succeed in revocation of a patent on the grounds that it is not a patentable invention by virtue of the patentee secretly using the invention prior to the priority date, each of the following must be satisfied: patentee has derived a commercial benefit by doing something with the invention that produces the benefit – – The use must be use of the invention “as claimed”, taking all the essential features of the claims – – The commercial benefit gained must – – There must be a use of the innovation in the sense that the

where concealment of essential features from that public act also occurred”.

PHIL BURNS Senior Associate

be an exercise of a de facto monopoly arising out of the

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