A patent is a set of exclusive rights granted over any device, substance, method or process that is new, inventive and useful (an Invention), for a limited time after a successful application process. Similar to trade marks, it is a registrable right granted by the country of registration. An applicant for a patent has to disclose the substance of the invention, making the information available to the public. Consequently, some inventors make the business decision not to disclose their patents, instead opting to keep their invention confidential as a trade secret. This article will explain the term secret use and how it is dealt with under the Patents Act 1990.

If you are granted a patent, you have exclusive rights during the patent term to exploit it. However, a patent will only be protected if all statutory criteria are satisfied. One criteria is ‘secret use’. A grant of patent may be revoked (or an application refused) if the Invention was secretly used before the patent’s priority date. The historical basis for this refusal is to prevent a patentee from gaining a longer monopoly than what is allowed.

Secret Use – What Counts?

The Patent Act does not prescribe what is classified as secret use but instead prescribes what acts are not taken to be secret use. Generally, these uses are:

  • for the purposes of reasonable trial or experiment;
  • solely in the course of confidential disclosure;
  • for any purpose other than in trade or commerce; and
  • to the Commonwealth, State or Territory.

When the Courts are asked to determine whether secret use has occurred, the focus is generally on whether or not the Invention has been applied commercially before the priority date of the claim. There would be no secret use if there were no commercial application. The line is less clear cut for experimental trials that accrue commercial benefit or viability if such experimentation are not considered to be ‘reasonable’. However, secret use is unlikely to have occurred where the patentee does not receive any commercial benefit for the use of their Invention before the priority date.

When does the priority date arise?

A priority date is the date a patentee’s legal claim arises. This date can be the same as the day the patent application is filed but this is not always the case. Under section 43 of the Patent Act, it is the date used to establish the novelty of a particular invention and the disclosure of the invention in the claim, in a manner that is clear enough and complete enough to allow someone in the same field to recreate your invention. If there are more than one claim in a patent, each claim may have a different priority date.

Conclusion

Intellectual property can be a valuable commodity and should be protected. However, this is not always an easy task. If you require assistance in gaining a better understanding of your intellectual property rights, including satisfying confidentiality requirements to protect from secret use, our lawyers have extensive experience in this area and would be happy to assist with protecting and registering your intellectual property. To speak with one of our lawyers today, contact LegalVision on 1300 544 755.

Lisa Lee

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