Patents Under Paris © 2006 David W. Opderbeck

Key Provisions National Treatment National Treatment National Treatment National Treatment Right of Priority Right of Priority Right of Priority Right of Priority –Within 12 months of filing in a member country, the applicant can file in another member country and priority will relate back to the date of the original filing Independence of National Patents Independence of National Patents Independence of National Patents Independence of National Patents –Invalidation of a patent in one country does not automatically invalidate a patent on the same subject matter in another country Compulsory Licenses and Working Requirements Compulsory Licenses and Working Requirements Compulsory Licenses and Working Requirements Compulsory Licenses and Working Requirements –Still allowed, but minimum period before a compulsory license may be sought for failure to work (3 years from grant or 4 years from app, whichever is longer) –No forfeiture of patent until 2 years after expiration of first compulsory license

Novelty vs. Absolute Novelty – Anesthetic Case (Australia) April 24, 1981 Lancet article – describes use of CPAP to treat adult apnea April 24, 1981 Lancet article – describes use of CPAP to treat adult apnea April 24, 1981 – provisional patent specification filed April 24, 1981 – provisional patent specification filed April 23, 1982 – complete patent specification filed April 23, 1982 – complete patent specification filed November 4, 1982 – patent application published November 4, 1982 – patent application published December 17, 1985 – patent application amended to include claims relating to single-hose technology December 17, 1985 – patent application amended to include claims relating to single-hose technology

Novelty vs. Absolute Novelty – Anesthetic Case (Australia) Australia is absolute novelty jurisdiction (no statutory bar grace period); therefore, if priority date is later than date of publication of Lancet article, the patent claims are anticipated by the Lancet article Australia is absolute novelty jurisdiction (no statutory bar grace period); therefore, if priority date is later than date of publication of Lancet article, the patent claims are anticipated by the Lancet article

Novelty vs. Absolute Novelty – Anesthetic Case (Australia) Applicants argument: (1) the amended application contained new matter (one hose technology) that was not in substance previously disclosed in the prior application; and (2) the complete specification was fairly based on the provisional specification. (The result of this two-step argument is that the priority date for the one-hose technology would be the date of the provisional specification) Applicants argument: (1) the amended application contained new matter (one hose technology) that was not in substance previously disclosed in the prior application; and (2) the complete specification was fairly based on the provisional specification. (The result of this two-step argument is that the priority date for the one-hose technology would be the date of the provisional specification) Respondents argument: applicant then did not properly disclose the best mode of the invention, either at the time of the original filing, or later when the application was amended Respondents argument: applicant then did not properly disclose the best mode of the invention, either at the time of the original filing, or later when the application was amended

Novelty vs. Absolute Novelty – Anesthetic Case (Australia) One tube method is better than two-tube method; however, one-tube method not known to applicant before the date of filing the complete specification (April 23, 1982) and date of publication of application (November 4, 1982), as shown by evidence that after those dates applicant presented at professional conferences two-tube versions of the device; therefore, best mode known at the time was properly disclosed One tube method is better than two-tube method; however, one-tube method not known to applicant before the date of filing the complete specification (April 23, 1982) and date of publication of application (November 4, 1982), as shown by evidence that after those dates applicant presented at professional conferences two-tube versions of the device; therefore, best mode known at the time was properly disclosed –Even if applicant knew of the one hose method by the date of the amended application (November 4, 1982), the relevant date for assessing the adequacy of disclosure is the date of the filing of the complete disclosure (April 23, 1982), because it is from that date that the patent term is measured

Novelty vs. Absolute Novelty – Anesthetic Case (Australia) Other prior art predating the 1982 dates related only to using CPAP to treat premature infants with underdeveloped lungs – held not to anticipate use of CPAP to treat adult apnea Other prior art predating the 1982 dates related only to using CPAP to treat premature infants with underdeveloped lungs – held not to anticipate use of CPAP to treat adult apnea