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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