In Australia, inventors seeking patent protection must ensure their inventions are novel and have not been previously disclosed or commercially exploited. However, the concept of secret use can complicate this path to patentability. Under the Patents Act 1990 (Cth), secret use of an invention before filing a patent application may invalidate the patent.
What Is Secret Use?
Secret use refers to the unauthorised or concealed commercial exploitation of an invention in the period before a complete patent application is filed. The rationale behind the secret use provision is to prevent inventors from benefiting from a commercial head start while still securing the 20-year monopoly granted by a patent.
Under section 18(1)(d) of the Patents Act, an invention is not patentable if it was secretly used in Australia by or on behalf of the applicant before the priority date.
Key Principles of Secret Use
- Commercial Exploitation
To be regarded as secret use, the invention must have been exploited commercially in secret before a patent application is filed, for example by selling a product to customers without revealing how it works. - Not All Use Is Disqualifying
The grounds of secret use only apply where there has been commercial gain. Use of the invention that is non-commercial and secret will not invalidate a patent claim. Examples of such non-commercial secret use include use for the purposes of reasonable trial or experimentation, and any use other than for the purpose of trade or commerce. - Use Must Be in Australia
The secret use must occur within Australian jurisdiction. Secret use outside of Australia does not invoke section 18(1)(d), though it may still affect novelty under international disclosure rules.
- Commercial Exploitation
Grace Period
In some circumstances, the 12-month grace period under Section 24 of the Patents Act may apply. This provision can forgive certain disclosures or uses within 12 months before filing a complete patent application. However, the grace period does not apply to commercial secret use by the applicant.
Best Practice for Inventors
To avoid pitfalls under the secret use provisions:
Avoid early commercialisation before filing a patent application.
Use NDAs and confidentiality agreements during development and trial phases.
Document all testing, regulatory use, and experimental activities to demonstrate that they fall within exceptions.
Seek professional advice before entering any agreements or product trials involving your invention.
Conclusion
Understanding and navigating the secret use provisions of the Australian Patents Act is critical for protecting innovation and securing valid patent rights. While the law aims to prevent unfair commercial advantage, it also recognises the realities of research, testing, and regulatory compliance. Inventors and businesses should plan carefully and consult intellectual property professionals to ensure their patent strategy remains compliant and enforceable.
If you have any further questions about secret use or any other provisions in the Australian Patents Act, please do not hesitate to contact one of our experienced patent attorneys.