Shelston IP - Moving Goalposts on Grace Period Provisions

Gareth Dixon and Charles Tansey of Shelston IP report on Mont Adventure Equipment Pty Ltd v Phoenix Leisure Group Pty Ltd [2008] FCA 1476, a recent decision of the Federal Court which has held that the grace period applicable to a “parent” application is different to that of its Divisional “child”, with the consequence that a Divisional application may be found invalid if there was disclosure of the claimed invention within the grace period of its parent.

According to Gareth Dixon and Charles Tansey, the effect of this decision is that the facility to file a Divisional during the course of prosecution of an Australian patent application is of restricted value where the Applicant would later seek to rely upon the grace period to assert the validity of the patent. Although Gareth Dixon and Charles Tansey understand that an appeal is unlikely, the possible unintended consequences of this decision may provide some impetus for lawmakers to amend the relevant legislation in a manner that would allow a Divisional application to rely upon the grace period applicable to its parent.

Shelston IP’s standard practice has always been to exercise an abundance of caution in advising clients that the Australian grace period provisions should only be relied upon as a “back-up” measure following inadvertent disclosure of one’s invention – and that equivalent provisions do not apply to other major jurisdictions such as Europe, Japan and China.

Shelston IP - Moving Goalposts on Grace Period Provisions