Federal Court of Australia
FEDERAL COURT OF AUSTRALIA
Mont Adventure Equipment Pty Limited v Phoenix Leisure Group Pty Limited [2008] FCA 1476
PATENTS – meaning of "the filing date of the complete application" in cl 2.2(1A) of the Patents Regulations 1991 (Cth) Patents Act 1990 (Cth) ss 5, 18, 24, 29, 43, 59, 79B, 79C, 97, 101B, 101G, 101M, 138 Patents Regulations 1991 (Cth) cll 2.2, 2.3, 3.12 MONT ADVENTURE EQUIPMENT PTY LIMITED v PHOENIX LEISURE GROUP PTY LIMITED
NSD 1924 of 2007
STONE J
2 OctobeR 2008
SYDNEY
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY NSD 1924 of 2007
BETWEEN: MONT ADVENTURE EQUIPMENT PTY LIMITED
Applicant
AND: PHOENIX LEISURE GROUP PTY LIMITED
Respondent
JUDGE: STONE J DATE OF ORDER: 2 OctoBER 2008
WHERE MADE: SYDNEY
THE COURT DECLARES THAT:
1. For the purpose of determining the validity of the Australian Innovation Patent No 2006100978 (Innovation Patent), and on the facts stated in the orders made by Bennett J on 11 December 2007, "the filing date of the complete application" within the meaning of reg 2.2(1A) of the Patents Regulations 1991 (Cth) is the filing date of the complete application for the Innovation Patent on 22 November 2006.
THE COURT ORDERS THAT: 2. The applicant pay the respondent's costs of this application. Note: Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY NSD 1924 of 2007
BETWEEN: MONT ADVENTURE EQUIPMENT PTY LIMITED
Applicant
AND: PHOENIX LEISURE GROUP PTY LIMITED
Respondent
JUDGE: STONE J
DATE: 2 october 2008
PLACE: SYDNEY
REASONS FOR JUDGMENT
Background 1 The applicant is the holder of Australian Innovation Patent No 2006100978 in respect of a certain travel pack. It claims that the respondent has infringed this patent. Presently before me is a preliminary issue which is relevant to the validity of the innovation patent. 2 In its defence and cross-claim the respondent rejects the applicant's claim of infringement on the basis that the innovation patent is invalid, inter alia, because it is not a patentable invention within the meaning of s 18(1A) of the Act. The respondent alleges that, when compared with the prior art base as it existed before the priority date, the invention is not novel or does not involve an innovative step. The respondent also claims that the prior art base includes prior art information made publicly available before the priority date through the applicant offering its travel packs for sale in Australia. The applicant admits that some of its travel packs were first offered for sale in Australia in or about October 2004. 3 The application for the innovation patent was filed on 22 November 2006 as a divisional application under s 79B(1) of the Patents Act 1990 (Cth), that is as an application for an invention disclosed in the specification filed with a previous standard patent application on 13 May 2005. It is assumed for the purposes of determining the preliminary issue that the invention which is the subject of the innovation patent was disclosed in the specification of the standard patent application filed by the applicant on 13 May 2005. The issue of priority dates can be put to one side because the Patents Regulations 1991 (Cth)effectively deem the priority date of the innovation patent to be that of the standard patent; cll 3.12(1)(c) and (2C). It is common ground therefore that the earliest possible priority date of the innovation patent is 13 May 2005. 4 The present question arises in the context of s 24 of the Act and cll 2.2 and 2.3 of the Regulations. Unless saved by those provisions, the prior disclosure in October 2004 would render the innovation patent invalid on the basis that the prior art base included the invention as claimed. As explained in more detail below, s 24 provides that, for the purpose of deciding whether an invention is novel or involves an inventive/innovative step, the decision-maker must disregard any information made publicly available through use of the invention by the patentee in the 12 months preceding the filing of a "complete application".
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