Australian patent law provides a 12-month grace period from the date of first disclosure by the applicant or inventor to validly file an Australian complete patent application. If the complete patent application is filed within 12 months of that first disclosure, the disclosure does not form part of the prior art base relevant to the complete patent application.

Canva Pty Ltd filed Australian patent application number 2020202729 on 23 April 2020. However, Canva had publicly disclosed the invention in May 2018. The invention relates to Canva’s Showsquad functionality and was added to and accessible by Canva’s users via their website.

Accordingly, the 12-month grace period in Australia expired in May 2019. Canva sought an extension of time of 12 months (to 1 May 2020), to file a complete application within the grace period.

On 17 September 2021, the Commissioner of Patents granted the extension of time to Canva to file a complete application within the grace period. The extension of time was granted on the basis of an error or omission by the US attorney, which led to the failure to file an application in Australia in time while relying on the 12-month grace period.

Background

In May 2018, Canva disclosed their invention by making it publicly available on the market.

On 3 September 2018, an officer of Canva sent an email to Canva’s US attorney to “mov[e] quickly to get a filing in the US and Australia before the grace period expires”.

On 24 April 2019, Canva’s US attorneys filed a US patent application for the invention. However, no Australian patent application was filed at the time.

On 31 March 2020, Canva’s new in-house legal counsel became aware of the expired grace period and advised the Australian patent attorney of the intention to file an application seeking priority from the US application.

On 20 April 2020, Canva instructed the Australian patent attorney to file a complete application with a request for the extension of time of 12 months to file within the grace period.

On 23 April 2020, the Australian patent attorney filed the complete application. While the complete application was filed in time to claim priority from the US application, Canva sought an extension of time of 12 months (to 1 May 2020), to file a complete application within the grace period.

On 15 March 2021, the matter was heard by way of written submission on Canva’s request after a series of attempts to satisfy the delegate.

The Evidence

The former in-house legal counsel of Canva asserted that:

“Canva’s approach at the time was to file a patent application for an invention before public disclosure, if possible. In the event of a prior public disclosure, Canva would still file a patent application for an invention by taking advantage of the grace periods available in the United States and Australia. The former in-house legal counsel declared that by the statement ‘so there will be benefit to moving quickly to get a filing in the US and Aus[tralia] before the grace period expires’ in the email… I intended that Toler Law Group (Canva’s US attorneys at that time) attend to a patent filing strategy of filing patent applications in both the United States and Australia, within their respective grace periods.”

The former legal counsel of Canva further asserted that he believed the failure to file an Australian patent application within the grace period was an error and that there had not been any change in their intentions to file an application in Australia. Further, Canva did not maintain their own system for monitoring patent deadlines and relied on external patent attorneys to comply with all relevant deadlines.

The Commissioner was satisfied that Canva had intended to file patent applications in Australia and the United States relating to the Showsquad functionality based on the assertions of Canva’s former legal counsel.

On the question whether there was a relevant error or omission, Canva submitted that they relied on a four-step usual chain of events at the relevant time to ensure that patent applications were timely filed, as follows:

1. Canva would decide to file a patent application – prior to public disclosure if possible, and if not, would take advantage of the grace period available in Australia.
2. Canva would instruct their US patent attorney to attend to the filing of the Australian patent application (and a US patent application), which involved the US patent attorney attending to the monitoring of the relevant deadline.
3. Canva would act on any communications from the US patent attorney, such as reminders, to enable the application to be filed.
4. The US patent attorney was responsible for the timely instruction to an Australian patent attorney to file the application.

Canva submitted that they successfully attended to items 1 and 2 and partially to 3 “but there was an error in not following through with the process by completing step 4.” The applicant submitted that this was the relevant error for the purpose of section 223: “[t]he failure to complete step 4, contrary to the usual process of and for Canva, is clearly causative of the failure to timely file the Australian patent application.”

Canva further submitted that the US patent attorney was responsible for the timely instruction to an Australian patent attorney to file the complete application. Accordingly, Canva characterised the error as appearing to be “a lapsing of memory or an accidental slip” by the US attorney. Unfortunately, the relevant US attorney is no longer working in the firm and therefore, Canva could not provide evidence from a person with direct knowledge of the circumstances surrounding the error or omission, a situation that the Commissioner described as “regrettable”.

Despite the lack of direct evidence from the US attorney who was responsible for instructing an Australian attorney to file the application, the Commissioner was able to find that it was a reasonable inference that Canva intended to file an Australian patent application within the grace period and there is a reasonable inference that there was an error or omission by the US attorney which led to a breakdown in the procedure in place for filing of Canva patent applications, albeit of an unidentified nature. It has generally been accepted that a breakdown in a procedure affecting a party’s intention can be characterised as an error for the purpose of section 223. It is self-evident that this error is causal of the failure to file an Australian application within the applicable grace period.

The Commissioner also found that Canva had acted diligently in filing the Australian patent application within 11 days of discovering that the Australian application had not been filed within the grace period and that other factors weighed in favour of exercising the discretion to grant the extension. Accordingly, the extension was granted.

Conclusion

The Commissioner decided that Canva’s failure to file the patent application in Australia within the 12 months grace period was the result of an error or omission under section 223(2)(a) of the Patents Act 1995 (Cth) and that the decision to grant extension of time would be in Canva’s interest and in the broad public interest in promoting innovation.

Key Takeaways

Whilst it is important to monitor the priority deadline of a patent application with prior public disclosure, care must be taken in ensuring that a grace period exists in other jurisdictions and ensuring that where circumstances require, the patent application is filed within the grace period.

We also caution that although IP Australia has granted extensions for filing patent applications within the grace period on at least two occasions, this practice has not been tested in court and it is possible the Court may decide that extensions cannot be granted in such circumstances