Something Old Can Become Something New: Prior Use in Australia and New Zealand
Article written by: Dr Jared Scarlett | Monday 10th August 2015
The Full Federal Court of Australia has clarified when public acts will destroy the novelty of an invention.
In Damorgold Pty Ltd JAI Products Ltd, the invention in question was a roller mechanism for a roller blind. Damorgold sued JAI for infringement of its patent over the roller mechanism. JAI counterclaimed that the roller mechanism of Damorgold’s patent was not new because JAI had imported and offered for sale, more than 20 years earlier, blinds containing a roller mechanism falling within the scope of the claims. As such, JAI claimed that the claimed invention was not new when compared to information made publicly available through doing an act.
The Judge at first instance held that the claims were not new when compared to the product imported by JAI on the basis that:
- the prospective customers were wholesalers who would have been interested in seeing how the roller mechanism worked;
- it would have been easy to disassemble and reassemble the roller mechanism and doing so would provide the skilled person with knowledge of all of the features of the mechanism;
- the sales assistant would have disassembled the blind and shown the roller mechanism to customers if he had been asked; and
- it did not matter that no one had actually disassembled the product because each potential customer had the opportunity to examine the componentry of the mechanism.
Damorgold appealed the decision but JAI did not appear at the proceedings and the Federal Court Judges heard only one side of the argument.
By a 2-1 majority the Full Federal Court reversed the primary Judge’s decision and held that the JAI’s display and offers to sell roller blinds did not make information regarding the roller mechanism publicly available.
Bennett J held that “there must be sufficient information made publicly available to enable a person skilled in the art to work the invention.” Giving the encased mechanism to a prospective customer did not constitute enabling disclosure. Bennett J indicated that “circumstances may differ where the public have an article in their possession to handle, measure and test to where they can only look at it”. Crucially, JAI’s evidence showed that no blinds were actually sold and that no samples were allowed to be taken away by, or were left with, prospective customers. Because no customer was free to examine the product as he or she pleased, nor had any opportunity to ascertain how the roller mechanism worked, there was no enabling disclosure.
Similarly, Yates J held that by showing the assembled product “the features that could be discerned only upon disassembly of the product were not made publicly available. It follows that merely showing the assembled product in the way found, even for the purpose of soliciting sales, could not anticipate the invention claimed”. Yates J expressly confined his decision to the unusual situation where, as in this case, no products had been sold and no samples given to prospective customers to retain.
This case highlights the distinction between written prior art and prior art acts.
Consequences of this decision for New Zealand Patents
While not binding, New Zealand Courts are likely to show deference to the Full Federal Court’s decision and apply the same test in New Zealand. Interestingly, the decision also highlights the change to the novelty test that occurred when the Patents Act 2013 was introduced in New Zealand.
Under the New Zealand Patents Act 1953, a patent could be revoked if the invention was “not new having regard to what was known or used before the priority date”. This included uninformative use. Under this provision, JAI’s display and offer to sell the blinds would have likely meant that Darmorgold’s claims were not new.
In contrast, under the New Zealand Patents Act 2013, the prior art base that is relevant to novelty is “all matter (whether a product, a process, information about a product or process, or anything else) that has at any time before the priority date [of the claim] been made available to the public… by written or oral description, by use, or in any other way”. This provision is similar to the prior art base in Australia. However, the prior art base in Australia does not relate to “all matter” but is limited to “information in a document in a document that is publically available… and information made publically available through doing an act”. The prior art base in Australia does not include “all matter”.
The definition of prior art base in the New Zealand Patents Act 2013 is virtually identical to that in the UK Patents Act 1977. While the prior art base includes “all matter”, the provision has been interpreted to mean that information must be available, ie: the disclosure must be enabling. Although this interpretation is based Article 54 of the European Patent Convention, the New Zealand Patents Act 2013 contains a provision that is very similar to Article 54. As such, it is highly likely that any prior use under the New Zealand Patents Act 2013 must also be informative. Hence something that was considered known or old under the Patents Act 1953, may be considered new under the Patents Act 2013.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.
 Damorgold Pty Ltd JAI Products Ltd  FCAFC 21.
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 NZ Patents Act 1953, s 41(e).
 Merrell Dow Pharmaceuticals Inc v HN Norton & Co Ltd  3 RPC 77 (HL) at 85 [Merrell Dow].
 NZ Patents Act 2013, s 8(1).
 Australian Patents Act 1990, sch 1.
 UK Patents Act 1977, s 2(2).
 Merrell Dow, above n 8, at 86.
 NZ Patents Act 2013, s 6.