Two patents directed to methods of detecting high pressure fluid injection injuries were granted to Quaker Chemical (Australasia) Pty Ltd (‘Quaker’), wherein the methods involved the use of a fluorescent dye to indicate the visibility of emitted fluid from injection injuries. Subsequently, Fuchs Lubricants (Australasia) Pty Ltd (‘Fuchs’) supplied/offered to supply its own high-pressure fluid products that contained a fluorescing dye (not Quaker’s product).
Two patents directed to methods of detecting high pressure fluid injection injuries were granted to Quaker Chemical (Australasia) Pty Ltd (‘Quaker’), wherein the methods involved the use of a fluorescent dye to indicate the visibility of emitted fluid from injection injuries. Subsequently, Fuchs Lubricants (Australasia) Pty Ltd (‘Fuchs’) supplied/offered to supply its own high-pressure fluid products that contained a fluorescing dye (not Quaker’s product).
Proceedings were initiated by Quaker against Fuchs on the basis of an alleged infringement in relation to the supply of hydraulic fluids containing fluorescent dye to their customers. Fuchs counterclaimed that Quaker’s patents were invalid, including on the basis of lack of novelty in view of disclosures made by the inventor of the patent prior to filing.
In the Federal Court, the trial judge held that the disclosures made by the inventor fell within the scope of the grace period because they were necessary catalysts in enabling reasonable trials to take place in public. In addition, it was held that Quaker’s patents were invalid and infringed.
The Full Court heard the appeal and overturned the trial judge’s decision on the basis that the meaning of ‘for the purposes of reasonable trial’ in the context of grace period provisions was considered to cover disclosures made public through the working of the invention. In particular, the Full Court determined that the disclosures did not fall within the scope of the grace period provisions since the disclosures were not necessary to the public working of the invention and were merely made to create interest in the invention.3 In this regard, the Full Court held that the inventor’s disclosures were simply ‘relating to,’ ‘for the purposes of,’ or ‘as a necessary precursor’ of the invention being worked in public.4
In particular, the disclosures were not considered to be related to the actual trials since they occurred at a time that was too distance from the actual trials. The Full Court further considered that the disclosures could have been using confidentiality agreements and hence it was not reasonably necessary for the disclosures to be made public. On this basis, Quaker’s patent was found invalid and the Full Court dismissed the infringement issues.
This decision highlights the necessity for confidentiality arrangements when making disclosures of an invention and prior to the filing of a patent application. In order to ensure a valid patent filing, patentees should ensure that a complete patent application is filed within twelve-months of a first non-confidential disclosure or public trial.
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¹ Patents Act 1990 (Cth).
2 Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd [2021] FCAFC 65 (‘Fuchs’).
3 Fuchs (n 1) 286.
4 Ibid 231-233.
