News Centre - Article 3
 
Dodging a Bullet – Getting Out From Under Your Own Art in Australia
 

- Bill Bennett

This article was originally published in the March 2006 issue of Intellectual Property Today.

Introduction
It is not unusual for an inventor to make an improvement or modification to an invention subsequent to the first publication of the invention, and it is often the case that the improvement or modification is of marginal patentability over the original or “main” invention.

The availability of a grace period under US law has meant that it may still be possible to pursue protection for the improvement or modification, provided that a US application directed to the improvement or modification is filed within 12 months of the publication of the main invention.

However, problems often arise when seeking corresponding protection for the improvement or modification in foreign jurisdictions.  Specifically, it is not unusual in foreign jurisdictions to have a situation arise in which the main invention is cited as prior art against the improvement or modification.

This article offers a solution that is available in Australia when such a situation arises.

Overcoming an Obviousness Rejection Based on Applicant’s Own Publication
It is, of course, preferable to traverse the obviousness rejection if possible.  However, assuming this is not possible the solution is to convert the later Australian application (which is directed to the improvement or modification) to be a “Patent of Addition” based on the earlier Australian application/patent (which is directed to the “main” invention). 

The relevant provision(1) reads as follows:-

Where:

  • a patent for an invention (in this Chapter called the main invention) has been applied for or granted; and

(b) the applicant or patentee (or a person authorised by the applicant or patentee) applies for a further patent for an improvement in, or modification of, the main invention; and
(c) the application for that further patent is made in accordance with the regulations;
the Commissioner may, subject to this Act and the regulations, grant a patent of         addition for the improvement or modification.

Importantly for the present scenario, it is further provided(2) that:-

Objection cannot be taken...in respect of an application for a patent of addition, and a patent of addition is not invalid, merely because the invention, so far as claimed, does not involve an inventive step, having regard to the publication or use of the main invention during the prescribed period.

“Prescribed period” is defined(3) as follows:-

The prescribed period is the period that commences on the priority date of the claim of the specification of the main invention and ends immediately before the priority date of the relevant claim of the specification of the patent of addition.

The result is that publication of the main invention in the window of time between the priority date of the main Australian application/patent and the priority date of the later Australian application is excluded from the prior art base for the purpose of assessing obviousness. 

Thus, in essence, the main invention ceases to be prior art, for obviousness, against the improvement or modification.  The quid pro quo is that the term of the Patent of Addition is tied to the term of the main patent, and some patent term will be sacrificed in adopting this strategy.

Note that there is no restriction on when an application (or patent) may be converted from a normal application (or patent) to a Patent of Addition.  Thus, the conversion may be made during the prosecution of the later application in response to a rejection based on the publication of the main invention.  The only restriction on timing is that the initial or “main” application (or patent) must be in force at the time that the later application (or patent) is converted to be a Patent of Addition.   

A small collateral benefit for the applicant resides in the fact that no maintenance fees are payable in relation to a Patent of Addition.  The Patent of Addition is deemed to be maintained as long as the main Patent is maintained.  In the event that the main patent is later abandoned or revoked, maintenance fees will again become payable in relation to the Patent of Addition.  However, the term of the Patent of Addition remains linked to the term of the main patent and the forfeited term is not regained.

A Patent of Addition need not be more limited in scope than the main Patent.  Put differently, the claims of the Patent of Addition need not be within the scope of the claims of the main Patent.  Thus, a Patent of Addition may be used to broaden the scope of the main Patent.  In a most extreme example, the Patent of Addition could be broader than the main Patent by complete omission of a claimed feature, with the omission constituting the improvement or modification(4).  Having said that, it should be borne in mind that the improvement or modification will still need to be novel over the main invention, and it may be difficult to make an argument that the broader claim is not anticipated by the publication of the main invention.

Summary
Converting the later Australian application to be a Patent of Addition has the effect of disqualifying the publication of the main invention as prior art for the purposes of assessing the obviousness of the improvement or modification. 

The quid pro quo is that there will be some loss of patent term.

- Bill Bennett , Pizzeys Patent and Trade Mark Attorneys (bbennett@pizzeys.com.au)

(1) Section 81
(2) Section 25
(3) Regulation 2.4
(4) see Hughes Tool Company v Ingersoll-Rand Company Limited [1977] FSR 406