Blindsided on prior use

A recent decision of the Full Court of the Federal Court reaffirms that not every prior use of an invention will be novelty defeating (see Damorgold Pty Ltd v JAI Products Pty Ltd [2015] FCAFC 31).

Damorgold’s patent related to a spring assisted mechanism for controlling blinds. JAI briefly marketed (but did not sell) a RolaShades product in Australia which possessed all of the integers of the claimed invention. The product was mounted in blinds on display at a showroom and at various customers.

The issue on appeal was the novelty of the claimed invention and whether the use of the product made novelty-destroying information publicly available in Australia. Damorgold argued the RolaShades product did not make the invention publicly available because the essential integers of the invention were not communicated to the public.

Justices Yates and Bennett agreed. The Court found that the features of the RolaShades product that could only be discerned if the product was disassembled were not disclosed to customers. The invention as claimed had not been made publicly available. Justice Yates emphasised that “neither the mere public availability of a product, nor its use in public, necessarily means that the features of the product have been made publicly available.”

The decision makes clear that for prior use of an invention to be novelty defeating, the prior use must enable the person skilled in the art to understand the invention by disclosing each of the essential integers claimed. An opportunity to observe the way the invention works without an opportunity to ascertain the internal workings of the invention will not be sufficient.