A basic requirement for patentability is that the invention must be novel (i.e. new) at the time of filing the patent application. This test for novelty is decided against any and all prior disclosures (such as publications, uses and exhibitions) across the world. If an invention has been disclosed before filing a patent application, then generally speaking no patent will be granted. This general rule makes a lot of sense, as it prevents a company today from being granted a patent to a telephone given that Bell first exhibited a working device in 1876.

It is important to understand that the test for novelty takes into account any disclosure by the patent applicant before a patent application is filed. For example, a scientist who has discovered a new cancer drug may disclose his invention in a medical journal paper. If the medical journal is published before the scientist’s employer (a pharmaceutical company) files a patent application, then the scientist’s own paper will generally prevent the new drug from being patentable.

The good news is that all is not lost for a patent applicant that has failed to file a patent application before publically disclosing the invention (at least in several countries). The patent laws of Australia, the United States and Canada for example provide a statutory 12 month “grace period” in which to file a patent application. Under these provisions so long as a patent application is filed within 12 months of the disclosure, that disclosure cannot be used to undermine the novelty of the invention.

Some countries have variations on basic grace period provisions. For example, under Chinese law a grace period may be allowed where it can be shown that the invention was disclosed without the authority of the patent applicant. For example, if our cancer scientist lodged his scientific paper without the authority of his pharmaceutical company employer, then the company may still be granted a patent in China to the new drug. However, if the company authorised the lodgement or was reckless to the lodgement then the grace period is not available.

A grace period is a so-called “savings provision” meaning that the law has been enacted to prevent the accidental loss of a legal right. A grace period provision should never be relied upon in any patent filing strategy, even just for the reason that many countries have no such provision. The gold standard is to always file a patent application before any public disclosure of an invention. Churchill Attorneys has a sound knowledge of Australian and international grace period law. We would be pleased to provide advice on your specific situation.

Every business (and especially start ups!) can benefit from an injection of funds and commercialization expertise to bring a new product or service to market.

The Australian Government has recently launched the Entrepreneurs Programme, as a flagship initiative too boost competitiveness and productivity of local businesses. Applications are now being accepted, so visit the www.business.gov.au website for further details.

The Entrepeneurs' Programme offers financial assistance in the form of matched funding directed to the commercialization new products and services. While the financial side is of course important, also on offer are business management services provided by personnel having private sector experience in a relevant field.

Churchill Attorneys has a number of clients involved in this new programme, and look forward to hearing their experiences over the coming year.

On 23 June 2016 the United Kingdom voted in a referendum to leave the European Union. As the UK is a member state of the European Patent Organization, a relevant question is whether or not a European Patent will continue to allow for protection in the UK.

In the short term, nothing will change because the actual exit date will not be for a couple of years. Even after the formal exit, it is unlikely that there be any change given the the UK is very likely to remain a signatory of the European Patent Convention. Thus, it is very likely that the present situation will continue well into the future allowing a patent application obtain protection through the European Patent Office.

A more immediate change may be seen on the patent enforcement side. As some readers may be aware, negotiations are underway to establish a Unified Patent, and a Unified Patent Court to facilitate infringement proceedings across multiple European countries. These negotiations have been on foot for many years, and were looking to be finalized early in 2017. However, in the light of the UK's exit from the European Union it could be expected that implementation will be yet further delayed.

Churchill Attorneys maintains close contact with a network of European attorney firms and will be kept apprised of any imminent changes to the situation.

In December 2015, the Full Federal Court held that the computer-implementation of a business scheme was not sufficient to transform it into a patent-eligible invention.

In this case (Commissioner of Patents v RPL Central Pty Ltd) the invention was a computer-implemented method and system configured to assess the credentials of a person against industry standards.

On 5 May 2016, the High Court of Australia dismissed application by RPL Pty Ltd for special leave, holding:

"The Full Court was plainly correct and, accordingly, none of the applicant's proposed grounds of appeal enjoys sufficient prospects of success to warrant the grant of

special leave to appeal".

Accordingly, the decision of the Full Federal Court stands undisturbed. Australian law therefore remains that the mere implementation of a business method by computerized means is insufficient to provide the requisite technical basis for grant of a patent