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.




But it could not sensibly be
said that the first and second
disclosures were part of such
a working or that the relevant
information was made publicly
available through such a working.”
“Further it was not reasonably
necessary that they be in public.

They could easily have been subject
to confidentiality constraints.”
The Full Court also pointed out that:
“… the first and second disclosures
concerned no more than (the
inventor’s) attempts to create
interest in the method, with the
hope that the Metropolitan mine
might then take steps towards
rigorous investigation and,
potentially, implementation.”
“The first and second disclosures
could have been the subject of an
express or implied confidentiality
obligation” The Full Court thus determined that
the first and second disclosures
were public disclosures of the
claimed method which invalidated,
for lack of novelty, both the standard
and innovation patents.

The key lessons for prospective
patent applicants are:
› ensure that no non-confidential
disclosures or public trials are
conducted before lodging a
patent application;
› if public trials must be conducted,
all ancillary and related
disclosures, be they oral or in
writing, should still be made
confidentially; and
› a complete patent application
should be lodged within 12 months
of a first non-confidential disclosure
or public trial, in order to benefit
from the broader, general grace
period provisions, and safeguard
your Australian patent rights.

Greg Barlett | Principal
BEng(Hons) FIPTA
greg.barlett@pof.com.au Inspire September 2021
In the circumstances, the Full Court
was asked by Fuchs to consider
the nature of two separate non-
confidential disclosures made by
the inventor between 2 September
2010 and 2 February 2011. If both
qualified as reasonable trial, then the
two Quaker patents would be valid
and infringed. If either of them did
not qualify as reasonable trial, then
the Quaker patents would be invalid
and therefore not infringed.

The evidence revealed that the
inventor’s first disclosure in about
September 2010, to the operators
of the Metropolitan Colliery in New
South Wales, was the initial query
to the mine operators about the
possibility of testing the invention
with mining equipment in a number
of later trials. This disclosure
revealed the claimed method to
the mine operators and did so
without any implied or explicit
confidentiality obligations.

The second disclosure in about
November 2010 was a simulation of
the inventive method in the carpark
of the mine, but was not a trial
conducted using any actual mining
equipment. The mine operators
were still, at this point, determining
whether there was enough in
this method to warrant testing on
actual mining equipment, which is
what the inventor was proposing.

Again, there were no confidentiality
obligations placed on the mine
operators for the second disclosure.

Subsequently, the mine operators
did go ahead with trials of the
method starting in December 2010
with some minor mining equipment
and leading up to an (ultimately
successful) underground trial with in
situ longwall equipment in May 2011.

However, the Court was comfortable
that these activities either more
squarely qualified as a reasonable
trial under the relevant provisions
and/or were trials that were
conducted after 2 February 2011.

In concluding that the first and
second disclosures did not enliven
the reasonable trial exceptions,
the Full Court said that the first
and second disclosures:
“… were too distant in time from
May 2011 which involved longwall
trials and such a context to be
sensibly considered to be part
of the working. Now there was
trialling on some equipment in
December 2010...

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