The Gatherer Vol 11

Ssh… There’s something you should know about secret use

T he main requirement for patent grant is that the patented invention must be novel (or new). This means that at the time of filing the patent application, the invention must not have been previously published There is, however, another requirement that is often overlooked by patentees and that is that the invention cannot have been secretly used for commercial purposes prior to the filing of a patent application. Secret use is a ground for patent revocation and failure to take this into consideration can be fatal to patent rights. or publicly disclosed by anyone, including the patentees themselves.

– any use of the invention by or on behalf of the Commonwealth, a State, or a Territory – any use of the invention by the

At the most fundamental level, a patent is a deal made between an inventor and the government in which the inventor is granted a monopoly to an invention for a limited term. This provides the inventor with a period of time in which they can exclusively benefit from exploiting the invention. In exchange, the inventor must fully disclose the details of the invention in the patent specification. The rationale behind this deal is that it offers an incentive for inventors to share their knowledge, thereby driving innovation. The secret use provisions have been developed to stop inventors in effect extending the term of the monopoly granted to them by reaping commercial benefit from the invention before filing a patent application. For example, an inventor of a new process for extracting gold is unable to secretly use that process themselves for commercial benefit and then file a patent application at a later date. Except ions to secret use It is important to note that there are exceptions to secret use. Section 9 of the Patents Act sets out certain activities that are not to be taken to be secret use. These include: – any use of the invention by the

patentee for any purpose, if a complete application is made for the invention within the prescribed period.

Court guidance on secret use The courts have considered numerous allegations of secret use and the outcomes provide some useful guidance on what transactions are considered ‘use’ and how to define ‘use for the purposes of trial and experiment’. The leading case in this area is Azuko Pty Ltd v Old Digger Pty Ltd [2001] FCA 10749, in which the patentee manufactured a number of articles, in this case drill hammers, before a patent application had been filed. The patentee had tested a prototype of his invention at a mining site. Following the test, the owner of the mining site gave the patentee an unsolicited order for five or six hammers in the month before the priority date. This order was not formally accepted by the patentee. By the priority date, the patentee had made15 to 20 hammers with some being made after the order had been received. On appeal to the Full Federal Court, it was held that there had been no commercial use of the invention before the priority date. Strong emphasis was placed on the fact that the actual acceptance of the offer was made after the priority date and so all steps required for the sale to be completed had not taken place. It was also found that the making and stockpiling of a patented invention before the priority date did not constitute secret use.

patentee for the purpose of reasonable trial or experiment only

– any use of the invention

by the patentee, being use occurring solely in the course of a confidential disclosure of the invention by the patentee – any other use of the invention

by the patentee for any purpose other than the purpose of trade or commerce

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