KEEP_IT_CONFIDENTIAL
When conducting an exempt
‘reasonable trial’ before filing
can still cause you a problem!
Inspire September 2021
In Fuchs Lubricants v Quaker Chemical 1 , the Full Federal Court has
clarified which of the ancillary activities that might occur before, around
or in conjunction with a public working of an invention for the purpose of
reasonable trial, before the lodgement of a patent application can be ignored
(and thus will not be damaging), when it comes to assessing the prior art base.

6 The Court has confirmed that the
actual working of an invention,
for example by way of a machine
physically operating in a supervised
trial, can be exempt from being
considered as prior art. However,
verbal or printed disclosures made
before, or even at the same time,
might not be particularly where
it might have been possible to
have ensured that the verbal or
printed disclosures were made
confidentially. In confirming this, the Federal Court
has reminded patent applicants
that it is always best not to rely
on prior art exemptions, and that
if a disclosure or use must occur
before filing a patent application,
that the disclosure or use is done
confidentially and ideally within 12
months of lodging an Australian
complete patent application.

In this case, the patentee (Quaker)
sued Fuchs for infringement of two
patents, a standard patent and a
certified innovation patent, both of
which had an earliest priority date
of 2 September 2011 and a filing
date of 2 February 2012. At first
instance, the patents were found
to be valid and infringed, but Fuchs
appealed that decision essentially
on the basis that the trial judge erred
in finding that disclosures made
by the inventor in late 2010 were
exempt from consideration as prior
art because they were instances of
‘reasonable trial’.

1 Fuchs argued that those disclosures
(or aspects of them) went further
than what should be considered as
a ‘reasonable trial’ and thus should
have destroyed the novelty of all
claims in both patents.

...the Full Court was
asked to consider the
nature of two separate
nonconfidential disclosures made by the
inventor. If both qualified
as reasonable trial, then
the two Quaker patents
would be valid.

The Full Court agreed with Fuchs
and held that both patents were
wholly invalid on the basis of a lack
of novelty, due to non-confidential
oral disclosures made by the
inventor in the lead up to the ‘trials’.

Australian patent law provides two
different forms of grace period for
the filing of a patent application after
the making of a non-confidential
disclosure of an invention.

Fuchs Lubricants (Australasia) Pty Ltd v Quaker Chemical (Australasia) Pty Ltd [2021] FCAFC 65
The first is a general grace period
of 12 months for the filing of a
patent application after making a
non-confidential disclosure of any
type. However, a complete patent
application must be made within
12 months of that disclosure – if so
made, the earlier disclosure can be
ignored and will not be considered
as prior art. Filing a provisional
application within the 12 months,
with a complete application filed
after the 12 months, will not trigger
the operation of this grace period.

The second is also a grace period
of 12 months but is narrower, only
operating after the making of a non-
confidential disclosure of specific
types, one of which is a “working
in public of the invention...for the
purpose of reasonable trial” provided
that “ because of the nature of the
invention, it is reasonably necessary
for the working to be in public.” To
trigger the operation of this grace
period it is acceptable to only
have lodged a provisional patent
application – a complete patent
application is not necessary.

In Quaker, the first grace period
permitted any disclosure made by the
inventor after 2 February 2011 to be
ignored, while the second grace period
additionally permitted disclosures
made between 2 September 2010
and 2 February 2011 to be ignored, but
only if those disclosures were for the
purpose of reasonable trial, and only if
it was reasonably necessary to make
those disclosures non-confidentially.