As readers will be aware, the publication or public use of an invention prior to the filing of a suitable patent application to establish a priority date, constitutes prior art which may invalidate the subsequent patent claims, unless excused by some form of grace period (see ‘Grace Periods’ – Consequences of Disclosure Before Filing).
But what about use of an invention which is not public? For example, a new manufacturing process may be patentable, and it may be possible to make use of such a process within a secure facility such that it is not disclosed to the public. As another example, it may sometimes be possible to manufacture a new patentable product, such as in the form of a prototype, which might even be demonstrated to prospective customers under conditions of confidentiality before any patent application is filed.
The question that then arises is whether, and in what circumstances, such use may invalidate a subsequently-filed patent application?
It is timely to look at this question now, because the Raising the Bar reforms in Australia, and the America Invents reforms in the US, will both result in changes to the treatment of non-public prior use in the early part of 2013.
Under the current US law, 35 USC 102(b) provides that if an invention is ‘in public use or on sale in this country [i.e. the US], more than one year prior to the date of the application for patent in the United States’ then the inventor will lose the right to obtain a patent. This is generally known as the ‘on-sale bar’, since it bars a person from obtaining a valid patent if they have been making commercial use of the invention any earlier than one year before the filing of a US patent application.
As we shall see, the Australian law relating to ‘secret use’ focuses similarly on commercial benefit (although this is to be found in the case law, rather than in the words of the Patents Act 1990), however there is currently no grace period available in relation to such use. But, as we shall also explain, there will be key changes next year to the working of the grace period in relation to prior commercial use in both Australia and the US.