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I've been selling my invention. Can I still get a Patent?

In Australia, the short answer is yes, you may still get a patent but only as long as the first public disclosure of the invention occurred less than 12 months ago. One of the requirements of patentability is that the invention must not have been disclosed to the public before the priority date; which is established during the initial stages of filing either a complete patent application or a provisional patent application.

  1. Your invention must be new. This means it has not been disclosed to the public before the priority date. The examination process will include a comparison of the invention to information that is publicly available – either in a document or through an act such as sale.[1] The prior art must disclose all the essential features of the invention. [2] This means if you have been previously selling your invention, it will have entered the public domain.
  2. The Australian Patents Act also contains a prohibition regarding the prior ‘secret use’ of an invention. [3] It is intended to prohibit a patentee extending their protection period by making commercial use of the invention before the priority date. Selling your invention would be held as making commercial use of it.

However, a grace period does exist under Australian law. The grace period allows for the public disclosure of an invention (under certain conditions) without an adverse effect on the validity of a subsequent patent application. This is provided, given that a complete (non-provisional) patent application for the invention is filed within 12 months of the first public disclosure. However, reliance on the grace period is intended as a saving provision in the case of mistaken or accidental disclosures. It will leave a window open for competitors and may not be accepted overseas.

A major risk arises with filing a patent application after commercial use has commenced. Third parties can potentially exploit a claimed invention in a granted patent without infringement if they had adopted the invention or took steps to adopt it before to the priority date of the patent application. Third parties may exploit the product, method or process if it was derived as a result of the applicant’s intentional public disclosure or use during the grace period. This can lead to a high number of people who have immunity to infringement claims. This can defeat the purpose of the patent and lead to a reduction in the commercial value of the patent for the holder.

In addition, grace period provisions against the self-disclosure of an invention prior to filing a patent application, do not exist in some countries.  Therefore, any public disclosure of an invention prior to filing a patent application will mean that valid patent protection cannot be obtained in some countries (including New Zealand, Europe and China) except in certain very limited circumstances.

If you have potentially experienced patent infringement or have been accused of patent infringement, please contact HopgoodGanim’s experienced Intellectual Property team.


[1] Patents Act 1990 (Cth), s 7.

[2] Nicaro Holdings Pty Ltd v Martin Engineering Co (1990) 91 ALR 513 at 517.

[3] Patents Act 1990 (Cth), s 9; Azuko Pty Ltd v Old Digger Pty Ltd (2001) 52 IPR 75.

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