The grace period provisions set out in section 24(1)(b) of the Patents Act provide that information made publicly available within 12 months before the effective filing date of a complete patent application is to be disregarded when considering the validity (novelty and inventive step) of a patent application.
Neurim filed a patent application with an earliest priority date of 31 October 2015 and an effective filing date of 29 November 2016. In 2019, Generic filed an opposition to the grant of the patent, citing a thesis that was published electronically on 15 April 2015 without Neurim’s consent. The thesis related to a study conducted by Neurim during the time that they were developing a prototype pertaining to the invention, and hence represented subject matter relevant to the invention. The Vice President of Neurim discovered that the thesis had been published electronically, but failed to inform the person responsible for Intellectual Property matters. Consequently, the application for the patent was not filed until more than twelve months had passed since the electronic publication of the thesis. Neurim sought to exclude the theses from the prior art base in accordance with the provisions of section 24(1)(b) of the Patents Act,2 arguing that they ought to be able to rely on the grace period because the thesis was made public without the consent of Neurim.
Generic argued that section 24(1)(b)3 provides a mere direction to disregard information considered as a prior art, and hence does not provide Neurim with the ability to extend the grace period using an extension of time request under section 223 of the Patents Act.4 However, the Delegate disagreed on the basis that section 24(1)(b) permits reliance on the grace period when a complete application is filed within twelve months of the information becoming available to the public, and the application was deemed to have been filed within the relevant period due to the granting of the extension of time request by Neurim under section 223(2) of the Patents Act,5, i.e. based on acceptance of reasons put forward as representing an error or omission which gave rise to the failure to file the application in the relevant time frame.
This APO decision highlights that it is possible to extend the grace period under section 223 of the Patents Act6 if the failure to file a complete patent application in Australia in time was due to a genuine error or omission.
1 Patents Act 1990 (Cth) s 24(1)(b).
3 Ibid s 24(1)(b).
4 Ibid s 223.
5 Ibid s 223(2).
6 Ibid s 223.