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  • Unreported Judgment

Mack Innovations (Australia) Pty Limited v Rotorco Pty Limited


[2010] QSC 138

Reported at [2011] 2 Qd R 217





Trial Division





6 May 2010




18 December 2009


McMurdo J


  1. The application for summary judgment upon paragraph 2 of the counterclaim is dismissed.
  2. The application to strike out paragraph 2.2 of the plaintiff’s answer to the counterclaim is dismissed.


INTELLECTUAL PROPERTY – PATENTS – PATENT APPLICATIONS – GENERALLY – where the plaintiff made a provisional patent application within the period prescribed by s 24(1) of the Patents Act 1990 (Cth) – whether the term “patent application” within that section includes a provisional patent application.

Acts Interpretation Act 1901 (Cth) s 36(2)

Patents Act 1990 (Cth) Sch 1, ss 7, 24(1), 29, 38, 40, 49

Patents Regulations 1991 (Cth) regs 2.2(d), 2.3(1)(c), 3.10

Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company [2008] APO 20

NSI Dental Pty Ltd v University of Melbourne [2006] FCA 1216


G Handran for the plaintiffs

A Musgrave for the defendants


Hemming & Hart Lawyers for the plaintiffs

McCullough Robertson Lawyers for the defendants

[1] The first plaintiff is the registered patentee of standard patent no. 2006203572 in respect of an invention entitled “Cable Pulling Apparatus for Helicopters”.  The second plaintiff is alleged to be the holder of an exclusive licence to exploit the invention although it is apparently not yet registered as such.  The plaintiffs allege that the defendants have infringed the patent and seek injunctions and damages or an account of profits.  There is also a claim by the second plaintiff against the second defendant for damages for breach of contract.

[2] The defendants plead that the patent is invalid on a number of grounds and counterclaim for its revocation and for other relief.  One of those grounds is that the invention was not novel when compared with what had been made publicly available through the testing of parts and subsequently a prototype of the apparatus upon a helicopter operated by the defendants.  It is common ground upon the pleadings that these events occurred in a period from early March to July 2005, but indisputably prior to 12 August 2005, which is the priority date of each claim within this patent.  That was the date on which the relevant provisional application was filed.

[3] The defendants apply for summary judgment upon their counterclaim in respect of the patent.  They say that upon the undisputed facts, the patent is invalid.  The plaintiffs’ response is that the matters relied upon do not affect the validity of the patent because they were of a kind within s 24(1) of the Patents Act 1990 (Cth), so that the information disclosed by the trials of the apparatus is to be ignored.  The issue upon this application is one of the proper construction of s 24 and, in particular, what is meant by “a patent application for the invention” within s 24(1).

[4] One of the requirements for an invention to be patentable for the purposes of a standard patent is that, so far as claimed in any claim,  the invention is novel when compared with the “prior art base” as it existed before the priority date of that claim.  This requires a comparison with the prior art base, and in particular with “prior art information”.[1]  It is common ground that, but for the operation of s 24, the prior art base in this case would include information about the invention made publicly available through the events upon which the defendants rely.   

[5] Section 24 provides, in part, as follows:

24Validity not affected by certain publication or use

(1)For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:

(a)any information made publicly available, through any publication or use of the invention in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and

(b)any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee;

but only if a patent application for the invention is made within the prescribed period.


[6] The defendants’ argument accepts that the publication or use of the invention, relied upon in this application for summary judgment, occurred in “prescribed circumstances”.  Regulation 2.2 of the Patents Regulations 1991 defines what might constitute prescribed circumstances, for the purposes of s 24(1)(a), to include:

“… (d)the working in public of the invention within the period of   12 months before the priority date of a claim for the invention:

(i) for the purposes of reasonable trial; and

(ii) if, because of the nature of the invention, it is reasonably necessary for the working to be in public.”

[7] As the defendants’ argument emphasises, for s 24(1) to be engaged there is also the requirement that a patent application be made within the “prescribed period”.  Regulation 2.3(1)(c) relevantly provides that the prescribed period, in a case such as this, is “12 months from the start of the first public working of the invention”.  Clearly that period had not expired when the provisional application was made (12 August 2005), but had expired by 14 August 2006, when the complete application was lodged.  For present purposes, the defendants concede that this complete application was associated with the provisional application and that it was duly made.[2]

[8] The defendants’ case is that s 24(1), in requiring a patent application to be made within the prescribed period, requires a complete patent application to be so made.  The plaintiffs’ case is that a provisional patent application will suffice.

[9] The term “patent application” is defined within Schedule 1 of the Act to mean “an application for a standard patent or an application for an innovation patent”.  That definition provides no support for the defendants’ argument.  Section 29 provides for the making of applications for patents, as follows:

29Application for patent

(1)A person may apply for a patent for an invention by filing, in accordance with the regulations, a patent request and such other documents as are prescribed.

(2)An application may be a provisional application or a complete application.

(3)A patent request in relation to a provisional application must be in the approved form and accompanied by a provisional specification.

(4)A patent request in relation to a complete application must be in the approved form and accompanied by a complete specification.

(5) In this section:

person” includes a body of persons, whether incorporated or not.”

As s 29 makes clear, an application for a patent is made by the filing of a patent request (and such other documents as are prescribed) and a patent request may be filed as a provisional application.  The term “provisional application” is not itself defined, but the term “provisional specification” is defined[3] to mean “a specification filed in respect of a provisional patent application”.  As a provisional application is an application for a patent, the defendants must explain why the term “patent application” in s 24(1)(a) should be construed as excluding a provisional application.

[10] The fact that a standard patent can be granted only upon a complete application[4] is relied upon by the defendants; but this provides no logical basis for confining the expression in s 24(1)(a). 

[11] The argument for the defendants also refers to the absence of a requirement for a provisional specification to contain a claim or claims defining the invention.[5]  Regulation 2.2(d) prescribes the circumstance of the working in public of the invention within 12 months before the priority date of a claim.  It is argued that if, as in this case, the provisional specification did not contain any claim, there could be no such circumstance as prescribed under reg 2.2.  That argument cannot be accepted, because the operation of s 24 and reg 2.2 can be identified once there is a complete application.

[12] The defendants’ argument, if accepted, would lead to a curious result in the not uncommon circumstances of the present case.  According to reg 2.2, the “prescribed circumstance” here is the working in public of the invention within the period of 12 months before the priority date, which is the date of the filing of the provisional specification.  An applicant has 12 months from the making of a provisional application in which to make an associated complete application.[6]  In cases such as the present, the practical effect of the defendants’ construction of “patent application” within s 24 would be to shorten both the prescribed period of this permitted prior publication or use under s 24 and the period of 12 months for the filing of a complete specification.  That consequence is unlikely to have been intended.

[13] The defendants’ submissions were unsupported by any authority.  But since the hearing, counsel for the defendants has drawn my attention to NSI Dental Pty Ltd v University of Melbourne[7], which is against the defendants’ argument.  In that case, Tamberlin J dealt with the present point as follows:

“[125]If the disclosure in the Information Package is sufficient to constitute anticipation and NSI proves that the information was made publicly available, the University must then show that this disclosure was made without its consent and that a patent application for the invention was made within the prescribed period of one year.  The University contends that the reference to a “patent application” in s 24(1) of the Act includes a “provisional application”.  I agree that s 24 should be so construed.  The language of that section makes no distinction between provisional and complete applications.  Section 29(2) makes it clear that a “patent application” may be a provisional application.”

[14] Counsel for the defendants has also referred me to a decision of a delegate of the Commissioner of Patents in Cadbury Schweppes Pty Ltd v Wm. Wrigley Jr Company,[8] and suggested that the delegate had disagreed with that reasoning of Tamberlin J.  But that was not the effect of the delegate’s reasoning.  The application for a patent which was relied upon in that case was the filing of a US provisional application, which the delegate held was not within s 29 of the Act.  Accordingly his Honour’s reasoning did not apply.

[15] Counsel for the defendants submitted that I should not follow NSI Dental Pty Ltd, presumably upon the basis that I should conclude that it is clearly wrong.  However, in my respectful view, it is correct.  Section 29 makes it plain that a provisional application is nevertheless a patent application.  There is nothing in s 24 to indicate that the term “patent application” is limited to that type of application which is a complete application:  rather the evident purpose of s 24 would be better served by giving the term its meaning according to s 29.

[16] It follows that the application for summary judgment upon paragraph 2 of the counterclaim must be dismissed.  For the same reasons, the application to strike out paragraph 2.2 of the plaintiff’s answer to the counterclaim should be dismissed.  I will hear the parties as to costs.


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

[2] The period of 12months for the filing of the complete application expired on a weekend so that the final day for lodging the complete application became Monday, 14 August 2006: s 36(2) of the Acts Interpretation Act 1901 (Cth).

[3] Within Schedule 1.

[4] In particular but only a complete application may be accepted under Patents Act 1990 (Cth) s49.

[5] Patents Act 1990 (Cth) s 40.

[6] Patents Act 1990 (Cth) s 38 and Patents Regulations 1991 (Cth) reg3.10.

[7] [2006] FCA 1216.

[8] [2008] APO 20.


Editorial Notes

  • Published Case Name:

    Mack Innovations (Australia) Pty Limited & Anor v Rotorco Pty Limited & Anor

  • Shortened Case Name:

    Mack Innovations (Australia) Pty Limited v Rotorco Pty Limited

  • Reported Citation:

    [2011] 2 Qd R 217

  • MNC:

    [2010] QSC 138

  • Court:


  • Judge(s):

    McMurdo J

  • Date:

    06 May 2010

Litigation History

Event Citation or File Date Notes
Primary Judgment [2011] 2 Qd R 217 06 May 2010 -

Appeal Status

No Status