Lack of novelty
563 The respondents submitted, and Axent disputed, that the invention as claimed in the claims of the Patent was not novel because the invention as claimed was disclosed by the September 2001 specification and as part of the installation process for the Western Ring Road Project.
564 Section 18(1)(b)(i) of the Patents Act provided that an invention is a patentable invention if the invention, so far as claimed in any claim, when compared with the prior art base as it existed before the priority date, is novel. Lack of novelty is a ground for revocation by a court: see s 138(3)(b). It is unnecessary to refer in detail to the definition of "prior art base" in Sch 1: it suffices to say that it includes information in a document that is publicly available anywhere in Australia, or information that is made publicly available through doing an act anywhere in Australia.
565 Section 7(1) of the Patents Act provided that an invention is taken to be novel when compared with the prior art base unless it is not novel in light of any one of the following kinds of information, each which must be considered separately:
(a) prior art information (other than that mentioned in paragraph (c)) made publicly available in a single document or through doing a single act;
(b) prior art information (other than that mentioned in paragraph (c)) made publicly available in 2 or more related documents, or through doing 2 or more related acts, if the relationship between the documents or acts is such that a person skilled in the relevant art would treat them as a single source of information;
(c) prior art information contained in a single specification of the kind mentioned in subparagraph (b)(ii) of the definition of prior art base in Schedule 1.
566 Information will have been made "publicly available" if it was made available to at least one member of the public who, in that capacity, was free, in law and equity, to make use of it: see Merck & Co Inc v Arrow Pharmaceuticals Ltd [2006] FCAFC 91; 154 FCR 31 at [98]-[103]. It is immaterial whether the invention has become known to many people or a few people: see Insta Image Pty Ltd v KD Kanopy Australasia Pty Ltd [2008] FCAFC 139; 239 FCR 117 at [124].
567 A prior art document must disclose explicitly or implicitly all the essential features of an invention, as claimed, if it is to deprive the invention of novelty: see AstraZeneca FCAFC at [350]-[352] and Samsung Electronics Company Ltd v Apple Inc [2011] FCAFC 156; 217 FCR 238 at [127]. Having regard to the disclosure, the person skilled in the art must be able to perceive, understand and be able to apply the discovery without inventive ingenuity or further experimentation: see Hill v Evans (1862) 4 De GF & J 288; 1A IPR 1 at 6; and JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2005] FCA 1474; 67 IPR 68 at [55] (Crennan J).
568 Difficult questions can arise as to the nature of the disclosure that must be made by the prior art information to anticipate an invention of a later patentee. The discussion by Lord Westbury LC in Hill v Evans has frequently been mentioned in this connection. In that case, Lord Westbury said at 6-7:
I apprehend that the principle is correctly thus expressed: the antecedent statement must be such that a person of ordinary knowledge of the subject would at once perceive, understand, and be able practically to apply the discovery without the necessity of making further experiments and gaining further information before the invention can be made useful. If something remains to be ascertained which is necessary for the useful application of the discovery, that affords sufficient room for another valid patent. ...
…
Again, it is not, in my opinion, true in these cases to say, that knowledge, and the means of obtaining knowledge, are the same. There is a great difference between them. To carry me to the place at which I wish to arrive is very different from merely putting me on the road that leads to it. …
Upon principle, therefore, I conclude that the prior knowledge of an invention to avoid a patent must be knowledge equal to that required to be given by a specification, namely, such knowledge as will enable the public to perceive the very discovery, and to carry the invention into practical use.
In Bristol-Myers Squibb Co v F H Faulding & Co Ltd [2000] FCA 316; 97 FCR 524 (Bristol-Myers) Black CJ and Lehane J said, in a very different context to the present case, at [67]:
[A] prior publication, if it is to destroy novelty, must give a direction or make a recommendation or suggestion which will result, if the skilled reader follows it, in the claimed invention. A direction, recommendation or suggestion may often, of course, be implicit in what is described and commonly the only question may be whether the publication describes with sufficient clarity the claimed invention or, in the case of a combination, each integer of it. …
See also General Tire at 486 and AstraZeneca FCAFC at [302].
569 As I have already said, the respondents submitted that the invention claimed in the Patent was not novel because before the priority date (i.e., 4 October 2002) the invention as claimed was disclosed by the September 2001 specification (TCS 037-5-2001) and as part of the installation process for the Western Ring Road Project. They submitted that the September 2001 specification had been made publicly available before the priority date in three ways: first, when it was posted to a number of suppliers of road sign equipment, including Hi-Lux and Axent, as part of the tender process for the Western Ring Road Project; secondly, by its release by the VicRoads Traffic Control Systems Group, which made it available to suppliers upon request; and, thirdly, pursuant to Victoria's freedom of information laws.
570 The respondents further submitted that the September 2001 specification "describe[d] the requirements for electronic variable speed limit signs which have each of the features of claims 1 to 28 of the Patent, with the exception of claims 12 and 13 (which require the variation of part of the annulus to be in response to an external sensor)". In this connection, the respondents relied on Hi-Lux's position statement on invalidity, in which Hi-Lux had stated that the specification (TCS 037-5-2001) provided a clear disclosure of each of the integers of the claims, with particular reference to claim 1. The respondents also relied on Compusign's position statement on invalidity, in which Compusign also alleged that the September 2001 specification disclosed all the features of the claims of the Patent, as set out in Annexure 1 to that statement. Further, the respondents relied on the evidence of Mr Jan. The respondents contended that the disclosure in the September 2001 specification was clear and direct.
571 In closing submissions, Axent said that it "puts the [respondents] that [sic] proof in respect of [the alleged invalidating disclosures]" and "also relies on each of sections 24(1)(a), 24(1)(b) and 24(2)". Axent submitted that the September 2001 specification did not anticipate the invention as claimed. Axent contended in its position statement (at [8(b)]) that the specification was merely a "wish list" that provided insufficiently direct disclosure. Axent amplified this statement in its closing submissions, contending that when the September 2001 specification was published "there was no VicRoads product to which that specification related, [and] the act of publication did not disclose a VicRoads invention".
Rather, the effect of that publication was the promulgation by VicRoads of a "wish-list". In effect, VicRoads was calling on others to produce an invention that matched the criteria set out by it, and a publication of this kind does not anticipate a patent.
572 Axent continued:
In their closing submissions the cross claimants continue to fail to provide a "reverse infringement" analysis of the [September 2001 specification] against each of the claims of the Patent. Further, the [September 2001 specification] is for more than just the signage to which the Patent lays claim, such that analysis of the disclosures in that specification must be extremely careful to delineate between the features of any relevant signage referred to and the wider control system that is described. In addition, the [September 2001 specification] refers only to signs which are rectangular, whereas a number of the dependent claims in the Patent are for signs which are square. The [September 2001 specification] accordingly will not anticipate these claims.
573 Axent disputed that the September 2001 specification was made "publicly available" for the purposes of s 7(1) of the Patents Act. Axent submitted that:
The onus of establishing publication is not discharged merely by inferential or even actual proof that a document was received: the [respondents] must establish that it was received without any relevant limitations as to its use. The suppliers to whom the tender documentation was sent are not members of the public as referred to in [JMVB Enterprises Pty Ltd v Camoflag Pty Ltd [2006] FCAFC 141; 154 FCR 348]. Rather, they are selected suppliers dealing confidentially with a government agency. The fact that such specifications may have been provided to such suppliers upon request at other times as well, including for type approval processes, is speculative at best and does not in any event establish publication of [the September 2001 specification] before the priority date or the requisite freedom of use that the notion of publication under the Act requires. Finally, in relation to being available pursuant to "freedom of information" laws provides only a right to obtain access, and is no proof of publication per se.
(Footnotes omitted)
574 At the hearing counsel for Axent submitted in closing that:
The evidence surrounding the publication of the 2001 VicRoads specification - this is the September version with the partly flashing annulus, the high water mark of that is that it may have been sent to other tenderers interested in the Western Ring Road project in October 2001. … There are a series of letters that came from the VicRoads subpoenaed documents that were sent to other manufacturers. All that's in evidence is the letters. The letters refer to these parties being sent tender documents. The attachments to the letters are not in evidence and it is not established through that correspondence that the specification has been made publicly available.
When I say that, it's not established through that correspondence as having been sent without any restrictions as to its use. And this is in the context where they're sent in response to a tender. The tender documentation, ultimate contract documentation, makes it very clear that those sorts of documents are all confidential, so are sent and to be maintained under obligations of confidence. And the onus on my learned friend to establish publication of that specification in a non-confidential fashion or in an unrestricted fashion has simply not been met.
575 Axent also submitted that there was no use of the invention as claimed on the Western Ring Road before the priority date, and that such use could not be considered as part of the prior art base for the purpose of s 7(1). In this context, counsel for Axent noted in closing that, amongst other things, Mr Zammit's evidence was that the relevant software was not installed at VicRoads until late November and, in order to have the signs operate "in the field in the manner that would be required to be in anticipation, they needed to be connected to that software".
576 Regarding the alleged disclosure on the Western Ring Road, Axent also relied on s 24(1)(a), contending that:
In relation to Axent's alleged conduct in making the signs visible on the Western Ring Road before the priority date (which is denied and not proved) such conduct was in any event for the purpose of reasonable trial and excluded under Regulation 2.2(2)(d) and 2.3(c). This is because, among other things, it was necessary so as to set up the signs appropriately for the ambient lighting, both in the daytime and night, to test the whole system, and because the Western Ring Road project was the first time that such signs would be able to be tested in situ.
577 Counsel for Axent reiterated this submission in closing address. She added that:
Section 24(1)(b) will apply to both the Western Ring Road and the provision of the 2001 specification to Western Ring Road tenderers and on the evidence those letters were within 12 months of the - sorry, the patent application was within 12 months of the date of those letters, which is the relevant timing requirement under that section. And then I will come to section 24(2) which applies, again, to both disclosures but is unlimited in time.
578 Axent submitted that the September 2001 specification was excluded from being considered for the purposes of novelty because of s 24(1)(b) and/or s 24(2). Regarding s 24(1), Axent drew attention to the Patents Regulations, which set out the applicable prescribed circumstances and periods as at the relevant date, saying:
In short, however, they require the following acts to be disregarded:-
a. the working in public of the invention within the period of 12 months before the priority date of a claim for the invention for the purposes of reasonable trial if, because of the nature of the invention, it is reasonably necessary for the working to be in public (section 24(1)(a), Regulation 2.2(2)(d) and 2.3(c)); and
b. any disclosures to which section 24(1)(b) applies where a patent application is made within 12 months from the day when the information referred to in that paragraph became publicly available (section 24(1)(b) and Regulation 2.3(2)).
579 With respect to the September 2001 specification, Axent contended that it had "disclosed its invention to VicRoads confidentially and never consented to VicRoads on-disclosing it"; and that "VicRoads' subjective understanding at the time, including whether or not it thought it was acting reasonably" was irrelevant. In closing at the hearing, Axent specifically referred to Mr Bean's evidence that he had not sought consent.
580 Axent contended that it had derived the information from the predecessor in title of the nominated person or patentee. Counsel for Axent submitted in closing on this point that:
Mr Bean told Mr Petridis to write the various inclusions into the 2001 specification after Axent had disclosed the invention to VicRoads. Now, there's a point taken against us that there has been insufficient proof of predecessor and title. That's addressed at paragraph 128 of our written submissions. There are additional references to transcript and other things, other than Mr Fontaine's evidence that it was Symon Australia and - who was the predecessor to Axent … .
So there was evidence given by Mr Zammit that it was Symon [Australia] initially and then Axent who was involved in the invention, that's at transcript 130 - 1.30 and the footnote 177. And then there are earlier emails as to the prototype's development with various corporate references, which are Symon Australia documents. But by the time we get to the expressions of interest for the Western Ring Road, the business has transferred to Axent. So there's a very clear trail of evidence that the predecessor to the invention, if I can put it that way, in terms of ownership, is Symon Australia and then coupled with Mr Fontaine's evidence that the business was transferred provides the relevant proof of the derivation. And as I've said already, the dates are within the prescribed period. The letters are dated 12 October 2001, sending out the specification and the provisional was filed on 4 October 2002.
581 Axent further submitted the disclosure was confidential. It submitted that its provisional application was made within 12 months from the date of the publication of the September 2001 specification shortly after 12 October 2001, because it had filed its provisional application on 4 October 2002. It followed, so Axent's argument ran, that s 24(1)(b) was engaged.
582 Axent also submitted that s 24(2) was engaged, on the basis that s 24(2) defines the information that is "quarantined from being part of the prior art base, not the disclosure per se". Axent submitted:
In that circumstance the relevant enquiry is as to the nature of the information disclosed, and whether any allegedly invalidating subsequent disclosures derive from and are alike in content to the initial disclosure. If so, then they too are disregarded for the purpose of determining what is prior art information.
Such an interpretation is more consistent with the purpose of the inclusion of the relevant section in the Act, and with the purpose of the Act as a whole.
583 Citing Re Application by Grant (2004) 62 IPR 143, Axent submitted that "a finding that such 'downstream disclosures' are not, as a matter of principle, prior art information has been made by the patent office in relation to s 24(1)".
584 In closing submissions, counsel for Axent submitted:
In the same way here, if the Crown, having been - having been told information, that is under the policies of the Act to be quarantined - and this is information coming from and with the consent of the inventor. The inventor has no control over what the Crown does with it. The inventor should not be penalised for the Crown then choosing to disclose it willy-nilly. So if, and given that the Act has no restriction on the Crown on disclosing, that carve-out from the prior art base is most appropriately whatever you've told the Crown. It doesn't give rise to any offence or cause of action against the Crown if they do make that on-disclosure, all it does is it takes it out of consideration from that prior art base or that subset of information that you look at when you are considering whether the invention in the patent is novel or inventive. Now, there are no third party inventions or activities here which are said to be part of the prior art base.
…
[W]e say that, given that the overriding policy objective of the Patents Act is to encourage disclosures to government and, in circumstances where the effect of that disclosure could be invalidating, is provided for in a section enabling that not to occur, then that section should be interpreted - and without a confidentiality rider on it, so any disclosure to government is covered by this section. Then the clear import of that section is that that information, you pick up and you put to one side when you considering whether invention is novel or inventive.
585 Axent also contended that the policy issues to which the respondents referred were irrelevant to s 24(2): see below. Axent submitted that:
To the extent that a unified policy approach can be discerned from [the respondents'] submissions that approach is misconceived, and would have the effect of rendering section 24(2) worthless, as any disclosures to the Crown could be on-disclosed by the Crown whenever it liked to whoever it liked, with such conduct voiding all patent rights, including avoiding any need for the Crown to seek to purchase or obtain any licence to use such rights. …
586 With respect to Axent's submissions about s 24, the respondents submitted in closing written submissions that "[t]he protection afforded by s 24(2) means that a person may disclose information to the Crown without having to address issues of confidentiality" (underlining in original). This was because "a disclosure to the Crown in and of itself will not constitute making the information publicly available". They contended that s 24(2) did not apply to the September 2001 specification because it was a disclosure made by, and not to, the Crown.
587 The respondents submitted that the language used in s 24(2) did not support Axent's construction, because s 24(2) referred to information "given … to" the Crown. The respondents contrasted this language with the language of s 24(1)(b), which referred to information "derived from" the patent applicant, referencing the source of such information.
588 The respondents further submitted:
For many disclosures to the Crown, there may be no expectation that the Crown will then make the information publicly available. Conversely, there are other disclosures in respect of which it would be expected that the information would become publicly available - the filing of a complete application for a patent is an example. For intermediate cases, the circumstances surrounding the disclosure to the Crown may still be relevant to assessing whether the subsequent disclosure by the Crown was, or was not, 'without the consent' of the patent applicant.
(Underlining original)
589 The respondents submitted that Axent's expansive interpretation of s 24(2) (so that the provision applied where the Crown made publicly available the information that had been disclosed to it alone) was "not supported by the language of s 24(2), and would undermine the balancing of interests struck by s 24(1)". The respondents submitted that the language of s 24(2) did not support the "reach-through effect that Axent contends for".
590 The respondents submitted that s 24 should be considered in context, noting that the provision "addresses information that would otherwise form part of the 'prior art base'". Citing Coretell Pty Ltd v Australian Mud Co Pty Ltd [2017] FCAFC 54; 250 FCR 136 at [181], they added that information only forms part of the prior art base if it is 'publicly available', and that confidential information is not of that kind.
591 The respondents argued that s 24 "involves a balancing of interests" in that the provision limited the public interest in being able to use information in the public domain freely, in order to protect a prospective patent applicant from the public disclosure of the applicant's invention in certain circumstances. Regarding s 24(1)(a), the respondents noted that these circumstances included:
(a) in respect of showing or use at a recognised exhibition (s 24(1)(a), regs 2.2(2)(a) and 2.2(3));
(b) publication during a recognised exhibition (s 24(1)(a), regs 2.2(2)(b) and 2.2(3));
(c) a publication read before or published by a 'learned society' (s 24(1)(a), reg 2.2(2)(c));
(d) reasonable trials that are reasonably necessary to be conducted in public (s 24(1)(a), reg 2.2(2)(d)); and
(e) where information was disclosed without the consent of the patent applicant, by someone who derived the information from the patent applicant (s 24(1)(b)).
592 The respondents also referred to the fact that, by the priority date, a general grace period had been introduced by the Patents Amendment Regulations 2002 (No 1) (Cth). This had effect from 1 April 2002, but only in respect of disclosures made on or from that date: see Patents Amendment Regulations 2002 (No 1) (Cth), reg 4(1). The respondents noted that a common feature of these exceptions was that they were limited in time.
593 The respondents continued by way of submission:
It follows that the balance struck between the interests of the patent applicant and the general public is such that the patent applicant is relieved from the implications of certain disclosures of its invention, but the public can confidently rely on information being in the public domain once that information has been in the public domain for some minimum period of time (generally around 12 months).
That applies even in the situation where there has been an unauthorised disclosure of the relevant information, and whether the patent applicant was aware of that disclosure or not - the interests of the public are still protected by the requirement that a patent application must be filed within 12 months of the disclosure: reg 2.3(2). (The public is provided with additional protection, by reason of the 'prior user defence' - see s 119(3).)
594 In closing submissions at the hearing, counsel for the respondents sought to state the respondents' position succinctly, as follows:
[S]ection 24 … involves a balancing of interests. There's the interests of the patent applicant in having certain protection and there's different policy considerations. Your Honour may recall some of those regulations deal with things such as specific exhibitions that are approved, but now since 2002 we've also got a general protection for someone who may not realise for up to a year that they could have sought protection. That's as against the interests of the public in understanding that they should be able to, subject to patent protection … subject to having someone do a search of the patent register, they should be able to practise the prior art after a certain amount of time has elapsed.
So if someone receives information in the public domain that doesn't appear to be confidential, the practical reality is that under the current regulations you would have some uncertainty for up to approximately a year in going forward and commercialising that, because there may be a patent application lurking. It does - it does need to be a complete specification that's now filed, that's the trigger, so you can't just start with a provisional and then get your further 12 months before you disclose. So there's that protection built in in that sense. But there's a balancing of interests.
595 The respondents argued that Axent's proposed construction of s 24(2) would not sit harmoniously with s 24(1). They noted that s 24(2) did not involve any time limitation. They submitted that, if the intended effect of s 24(2) was, as they said, to deem disclosures to the Crown to be confidential, then the public had some certainty about its position. In this event, so the respondents said:
Should a disclosure to the Crown somehow be learned of, any compulsory disclosure of that information will not avail a person seeking to invalidate a patent.
If, on the other hand, Axent's position were accepted, then, so the respondents submitted, "information that entered the public domain following its disclosure to the Crown could not be relied on by the public at any time" (underlining in original). This would, so the respondents submitted, create considerable uncertainty, since a member of the public would not necessarily be aware that the information had originated from a disclosure made to the Crown. As counsel for the respondents put it in closing oral submissions:
Axent's position is actually far … wider - would have far greater reach because it could have done nothing until even now, today, and now filed a patent. Waited to see - waited 20 years, 30 years, 40 years to see how this particular technology developed and then filed a patent knowing that all of the public use of that invention during the intervening period was precluded because section 24, subsection (2) has got no time limit. And if the information came through that particular pathway, it's excluded from consideration as being part of the prior art.
596 Further, the respondents submitted that, on Axent's approach, s 24(2) would give greater protection where the disclosure to the Crown was intentional on the patent applicant's part, as opposed to where disclosure to the Crown was made without the patent applicant's authorisation. In written submissions, the respondents contended that, on Axent's construction:
… information disclosed by the Crown would be excluded from the prior art base if the information had been knowingly disclosed to the Crown (see s 24(2)(a) …), but would not be excluded after expiry of the time limit applicable to s 24(1)(b) if the information had first been disclosed to the Crown without the patent applicant's consent.
(Underlining original)
597 In closing submissions, the respondents clarified their position, explaining that in their submission s 24(2) applied only to disclosures made to the Crown. Other disclosure, including disclosures by the Crown, were governed by s 24(1), and specifically, here, s 24(1)(b). The respondents also argued that Axent's reliance on Re Application by Grant was misplaced.
598 The respondents accepted that they had the legal onus of establishing that a document or an act forms part of the prior art base. Regarding s 24(1)(b) of the Patents Act, the respondents submitted that Axent bore at least the evidentiary onus of establishing that s 24(1)(b) applied, relying in this connection on Coretell at [227] and Grove Hill Pty Ltd v Great Western Corporation Pty Ltd [2002] FCAFC 183; 55 IPR 257 at [221] applying Purkess v Crittenden [1965] HCA 34; 114 CLR 164. The respondents referred to but did not seek to rely on NSI Dental Pty Ltd v University of Melbourne [2006] FCA 1216; 69 IPR 542 at [125], where Tamberlin J apparently proceeded on the basis that the party seeking to rely on s 24 bore the onus of proof.
599 The respondents submitted that Axent had not adduced sufficient evidence to provide a basis for the operation of s 24(1)(b). In closing submissions at the hearing, counsel for the respondents said:
So in relation to section 24 subsection (1)(b), the respondents say that Axent can't avail itself of that for four reasons. So the first reason being that the information about [the] partially flashing annulus was already known to VicRoads, the second reason being that the disclosure wasn't by the relevant person. The third reason being the disclosure was made by consent, the original disclosure, and the fourth being that the continuation of the disclosure by VicRoads - that is, beyond the date on which the tenders were received - was with the implied ongoing consent of Axent, or Mr Fontaine.
600 Regarding the first reason, the respondents submitted that Mr Jan's evidence showed that VicRoads already had knowledge of the use of a partially flashing annulus, both as a result of Mr Jan's own trialling of that feature while employed by VicRoads and as a result of a mechanical sign from 1992 with a partially flashing annulus. As their counsel put it at the hearing, VicRoads knew about a partially flashing annulus for three reasons.
One, it knew about the metal plate sign with a partially flashing annulus, it wasn't a variable speed limit sign but it knew about that concept. That was in its product sheet and it was also on the gantry that Mr Jan gives evidence about. Further, there was evidence by Mr Jan that he undertook trialling of a partially flashing annulus while an employee of VicRoads.
601 Regarding the second reason, the respondents' counsel submitted at the hearing:
[T]he evidence was that the disclosure was in 2000 - September 2000. … [M]y learned friend opened … this morning … on exactly that same basis and the submissions have always been that disclosure was in 2000. Axent did not exist in 2000.
The respondents submitted that since Axent was not incorporated until 30 March 2001, it could not have been the "nominated person" or the "patentee" (being Axent itself) making the disclosure in 2000 (or whose consent was given to the disclosure) for the purposes of s 24(1)(b). It follows, so the respondents said, that disclosure was not made by the nominated person or the patentee, as s 24(1)(b) required.
602 Counsel for the respondents submitted:
What Axent submits in its answering submissions is that the answer is to be found at Mr Fontaine's first affidavit, paragraphs 9 to 12. Now, this is where the issue of the evidentiary onus comes in, as well as … associated considerations of Blatch v Archer. The single sentence that is in there - the first sentence of paragraph 12 where Mr Fontaine simply says:
I established Axent in March 2001 and transferred Symon Australia's business to it including transferring all employees and their entitlements.
Now, if Axent wants to put forward a basis to rely on section 24, it needed to do a lot better than that. It needed to give evidence that was supportive of there being a relevant successor entitled. We don't know whether that would have been Mr Fontaine or Symon [Australia]. … [E]vidence wasn't given about his relevant role. Certainly if there's anything in writing, anything orally, anything along those - any details about what that underlying basis was, was not advanced in the evidence other than that single rolled up sentence, which in our submission does not … support and does not provide a basis for the requirement that the disclosing party be shown to have been a predecessor in title.
I interpolate here that the principle in Blatch v Archer (1774) 1 Cowp 63; 98 ER 969 is that evidence is to be weighed according to the capacity of a party to adduce it.
603 The third reason was stated by counsel at the hearing as follows:
The … information was not disclosed on a confidential basis. Therefore, the … relevant disclosure was not made without the consent of whoever the relevant person may be - Mr Fontaine or Symon [Australia]. But let's just -forgive me ..... Mr Fontaine or Axent. So if somehow Axent is the relevant successor, it did not disclose the information in circumstances that would have given rise to an obligation of confidentiality. So your Honour will recall that there was a bit of - quite a lot of cross-examination exploring of those - that issue and related issues including Mr Bean and Mr Fontaine critically.
And what was clear from the evidence was that no one asserted that there was anything specific said on that occasion about confidentiality. The common law principle, therefore, is that you assess it objectively. I'm sure your Honour is familiar with Coco v Clark and Megarry J but I've got the citation to hand - it's (1968) 1 AIPR 587 at 591, but it's a reasonable person standing in the shoes of the relevant person. So it's an objective test from the facts as to whether an obligation of confidentiality should be implied. And it's set out at page 22 and 23 some of the relevant factual considerations here, but true it may be that there may well be various disclosures made by someone in the position of someone like Mr Fontaine to someone in the position of someone like Mr Bean as a representative of VicRoads that would be protected by confidentiality. There would be plenty of examples where that would be natural to imply that, so confidential pricing, tender information, a new technical solution, perhaps many examples of prototypes but here what was being disclosed was an idea of having a different means of informing motorists of the fact of a change of speed.
How that was - so Axent wanted VicRoads to specify that, to include that in the specifications for signs to be delivered to it, including as things got closer to 2000 - or later in 2001, in the context of the … Western Ring Road project … . But Mr Fontaine acknowledged … he had a desire to have it included in - interposed in the specification but says he didn't press the point. Mr Bean didn't consider that he needed any permission from Mr Fontaine. He understood similarly that Mr Fontaine was happy for it to have been disclosed. That was Mr Fontaine's evidence as to his reaction when he received the tender pack and found that it had been specified. The nature of this particular information was not information that was intended to be kept confidential. Quite the opposite. And then the follow-on point … that relates to the period up until the disclosure, but then it is disclosed in circumstances where Mr Fontaine knew it was disclosed to others, knew it was in a specification of general application, made no complaint, unsurprisingly, because he was happy that it was disclosed… So there was implied consent to an ongoing disclosure.
604 In written submissions, the respondents submitted that the existence of consent should relevantly be inferred "on two alternative bases", namely:
(a) the disclosure of the information by Mr Fontaine to Mr Bean was in circumstances where it was reasonable for VicRoads to understand that it could make the information publicly available by including it in a product specification; and
(b) VicRoads continued to make the 2001 specification publicly available from October 2001 through until the priority date in circumstances where Mr Fontaine was aware of the inclusion of the information in the specification, and made no complaint about that fact.
The respondents argued that the information was disclosed in circumstances in which it was reasonable for VicRoads to publicly disclose that information and that the circumstances were such that it was reasonable for VicRoads to continue to make the September 2001 specification publicly available
605 The respondents further contended that, as part of the sign installation process for the Western Ring Road Project, Axent, working with Mr Priest from VicRoads, demonstrated the features of the installed signs during September 2002. The respondents submitted that:
Those signs were made in accordance with the requirements of [the September 2001 specification]. The demonstration process involved demonstrating the signs changing speed limits, and demonstrating a partial annulus flash that was visible to motorists using the Western Ring Road.
This involved a demonstration by Axent itself, and s 24 does not apply to that disclosure. The disclosure did not involve any relevant trial of the invention itself, and the signs had already been subjected to a separate acceptance process in Axent's factory. As for the general 'grace period' exclusion, which applied to disclosures from 1 April 2002, this does not apply because the 12 month period is instead referable to the filing of a complete application, which did not occur until October 2003: reg 2.2(1A).
606 In closing submissions at the hearing, the respondents' counsel noted that this use on the Western Ring Road was a more difficult lack of novelty case because the evidentiary basis was less clear. The respondents' submission was, however, that Mr Priest's evidence should be accepted. Mr Smith acknowledged that this argument was advanced because of the s 24 argument "around the VicRoads" disclosure.