Damorgold Pty Ltd v JAI Products Pty Ltd

Damorgold Pty Ltd appealed against a decision of the primary judge in which the validity of Australian Patent No. 760547 was upheld. JAI Products Pty Ltd defended the appeal on the basis that the patent was invalid as it lacked novelty. The appeal was heard in the Full Court of the Federal Court of Australia. The court was required to determine whether the prior use of a product by JAI constituted prior use of the claimed invention for the purposes of section 7(1) of the Patents Act 1990 (Cth). The primary judge found that it did not, and the appeal centred on the correctness of that finding.

The court found that the primary judge erred in his finding that the mere access to the product did not constitute prior use of the claimed invention. The court found that the primary judge had erred in his analysis of the relevant statutory provisions, and that the proper approach was to consider whether the prior use involved the claimed invention in its entirety. The court found that the prior use of the product by JAI did involve the claimed invention in its entirety, and that it therefore constituted prior use for the purposes of section 7(1). The appeal was allowed and the orders of the primary judge were set aside and replaced with new orders.

The court ordered that JAI Products Pty Ltd be restrained from infringing certain claims of the patent, and that the validity of those claims be certified as having been successfully questioned. JAI Products Pty Ltd was ordered to pay the costs of the appeal.