What is a grace period?
A grace period is a period of time within which a disclosure of an invention by the patent applicant or a disclosure of the invention without consent of the patent applicant is excluded from consideration in assessing novelty and inventiveness.
In jurisdictions such as Europe and China, grace period only applies to limited circumstances, for example, international exhibitions recognised by authorities. However, it is quite common that researchers from universities publish their inventions in academic papers or individual inventors discuss their inventions online before filing patent applications. Therefore, it becomes very difficult for patent applicants in those jurisdictions to protect their inventions if their inventions are disclosed outside the limited circumstances. In contrast, Australia offers a generous grace period that applies to a wide range of circumstances, which essentially include all sorts of self-disclosures, involuntary disclosures and commercial use (also referred to as secret use in Australia), if a complete patent application is filed in Australia within the grace period. Therefore, even if an invention is not patentable due to a pre-filing disclosure elsewhere in the world, Australia is the place the patent applicant may want to consider to have the invention protected.
How to calculate the grace period in Australia?
Generally speaking, if a complete patent application is filed in Australia within 12 months from the first self or involuntary disclosure, for example, a published academic paper or an online discussion, the disclosure(s) from the first disclosure to the filing date of the complete patent application will be disregarded in assessing novelty and inventiveness. Note that the complete patent application includes a Convention application filed in Australia claiming priority from a patent application filed overseas and a PCT patent application designating Australia (the international filing date of the PCT patent application is regarded as the Australian filing date). In a hypothetical scenario, a patent applicant published an online article describing how an invention works on 15 January 2017 and subsequently filed a corresponding European patent application on 10 March 2017. Consequently, the patent application is likely to be rejected in Europe due to the online article. However, if the patent applicant files a Convention patent application in Australia by 15 January 2018 (i.e., 12 months from the publication of the online article), the online article will be excluded from the prior art base in Australia.
Not surprisingly, there are always special cases when it comes to law. However, surprisingly, the special cases are in favor of patent applicants this time. Recent Australian Patent Office decisions, particularly, Biogen Idec MA Inc.  APO 25 (Biogen) and Rozenberg & Co Pty Ltd. v Velin-Pharma A/S  APO 61 (Rozenberg), have established that the grace period extends to “whole of contents“ citations (i.e., Australian patent applications having an earlier priority date but a later publication date than the patent application under examination, including PCT patent applications designating Australia) given the conventional understanding that the grace period does not apply to “whole of contents” citations. Simply put, the Patent Office decisions indicate that if the complete patent application is filed within 12 months from the publication of the “whole of contents” citation whether the “whole of contents” citation is published before or after the filing date of the complete patent application, the “whole of contents” citation should be excluded from the prior art base. Obviously, the patent applicant will benefit from the decisions.
As set out above, the grace period in Australia is generous but can also be tricky. Therefore, if you have any questions in relation to the Australian grace period, please contact Baxter IP attorneys for a discussion in order to get the most out of your or your clients’ patenting investments.