Clarification of patent novelty limits

The Australian courts have recently clarified what acts will constitute novelty destroying prior art. In Australia, patents are normally invalid where the idea was publicly used or known before the priority date of the application. This normally means a novelty-destroying act occurs when at least one member of the public is free to make use of the information obtained from the act.

In Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31, the Full Federal Court considered a patent for an internal spring mechanism for controlling the range of a roller blind. It was accepted that a number of blinds having the mechanism had been imported into the jurisdiction by a wholesaler and that the blinds had been demonstrated to many trade customers. However, whilst customers were free to buy or examine the blind, there was no evidence that anyone had examined the internal workings of the blind to discover how the spring mechanism worked.

The majority of the court found that not only must it be shown that the invention was placed in the public domain, but that also there must have been an actual disclosure of all the essential integers of the invention to a member of the public. The assembled version of the blind did not disclose the essential features of the invention and did not constitute an “enabling disclosure” as the spring mechanism was hidden from normal view. What was relevant was what was actually disclosed and not what theoretically could be disclosed.

As such it was found that, as the essential features of the invention had not been prior disclosed to the public, the patent was valid and enforceable.

This article by Shelston IP Partner, Peter Treloar, first appeared in Managing Intellectual Property magazine, May 2015.