FOR IP PROFESSIONALS

Patents displayed at international exhibitions

If you are organising an international technology exhibition, trade fair or similar event (or are planning to show an invention at such an event either in Australia or elsewhere), you need to be aware of the consequences of showing the invention.

In Australia and most other countries, if an invention has been made public (including being displayed to the public at an exhibition) before a patent application has been made, a valid patent cannot be granted for that invention unless the exhibition is one recognised in the Australian Patents Act.

For certain 'international exhibitions' there are international conventions and special provisions in the Patents Act, that have the effect of preventing the public display of an invention at that exhibition from invalidating a subsequently filed patent.

The only exhibitions that are covered by these conventions and provisions are 'international exhibitions' which let in products and exhibits from other countries. Two categories of international exhibitions are recognised in the Patents Act:

1. An official or officially recognised international exhibition

The protection given to applicants for the display of their inventions at these exhibitions is generally recognised internationally.

Brisbane's World Expo 88 was an example of this category of exhibition, which is organised on a Government-to-Government basis. Only a national Government can apply to the Bureau of International Expositions to stage such an event.

For information on the calendar of exhibitions approved in accordance with the Convention relating to International Exhibitions, you should refer to the Australian Intellectual Cultural Council.

2. An international exhibition recognised by the Commissioner of Patents

An international exhibition recognised by the Commissioner generally will not be recognised as an international exhibition by other countries.

Anyone can request that an exhibition be recognised by writing to us. When the Commissioner recognises an exhibition, a notice is published in the Australian Official Journal of Patents before the beginning of the event.

The Commissioner will only recognise exhibitions that:

  • are held in Australia
  • have an emphasis on innovation
  • are not essentially commercial in nature
  • are international (as explained above)

When making a request you will need to include sufficient information to satisfy the Commissioner that the exhibition meets these requirements.

With regard to the requirement that the exhibition be 'international', showing to the Commissioner that foreign exhibitors have been invited may be enough. It is not necessary that foreign products be actually exhibited.

The Commissioner will only recognise an exhibition if he or she is satisfied that exhibitors are informed that the recognition given by the Commissioner gives no protection to applicants if they intend to make a patent application in a foreign country.

Before recognising an exhibition, the Commissioner will require the organisers of the exhibition to advise all exhibitors in writing, at least two weeks before the exhibition:

  • that while the exhibition has been recognised by the Commissioner of Patents for the purposes of patents in Australia, the exhibition has not been recognised by other countries.
  • that any exhibitor contemplating filing a patent application for their invention in another country should make sure that a patent application for the invention is filed, at least in Australia, before their invention is exhibited.
  • that any exhibitor thinking about filing a patent application for their invention should consult a professional adviser, such as a registered patent attorney, before their invention is exhibited.
  • to include in any publicity that makes reference to the exhibition being recognised by the Commissioner, a statement (of equal prominence) saying that the recognition applies in Australia only.

Applying for a patent following an exhibition

To obtain a patent in Australia and take advantage of the provisions of the Patents Act relating to exhibitions, the exhibitor must file a patent application in Australia within a certain period of the first showing or use of the invention at a recognised exhibition.

Exhibition before 15 April 2013

Where the patent application (which may be either a provisional or complete application) claims priority from an overseas application, it must be filed in Australia within 12 months of the overseas application, which in turn must be filed within 6 months of the first showing or use of the invention at the recognised exhibition.

In all other cases, the application must be filed in Australia within 6 months of the first showing or use of the invention at the recognised exhibition.

The patent applicant must also:

  • at the time of filing the application, file a notice stating that the invention has been exhibited
  • prior to the complete specification in respect of that application of a standard patent becoming open to public inspection, or within 6 months of the filing date of the complete specification of an innovation patent application, file a statement issued by the authority responsible for the exhibition in which:
    • the invention and the exhibition are identified
    • the date of the opening of the exhibition is given
    • where the first disclosure of the invention during the exhibition did not take place and on that date, the date of that disclosure

Exhibition on or after 15 April 2013

Where the patent application (which can only be a complete application) claims priority from an overseas application, it must be filed in Australia within 12 months of the overseas application, which in turn must be filed within 6 months of the showing, use or publication of the invention at the recognised exhibition.

Where the patent application is associated with a provisional application, it must be filed in Australia within 12 months of the provisional application, which in turn must be filed within 6 months of the showing, use or publication of the invention at the recognised exhibition.

In all other cases, the application must be filed in Australia within 12 months of the showing, use or publication of the invention at the recognised exhibition.

Publication of the Invention

The publication of the invention must have occurred during the exhibition at which the invention was shown or used. However, the publication does not need to occur at the exhibition.   Thus, for example, an advertisement of the invention which appeared in a newspaper during the exhibition would be considered a relevant publication, whereas brochures disclosing the invention and publicly distributed before the exhibition would not.

To obtain patents in other countries, an IP professional should be consulted, as the requirements relating to exhibitions vary from country to country.

Because the time for making a patent application in another country based on an Australian application may be affected by the disclosure at the exhibition, professional advice should be sought before disclosing the invention.

Last Updated: 03/4/2014