This is why if a business is to disclose details of its technology before filing a provisional patent application, it must be disclosed under the terms of a confidentiality agreement or non-disclosure agreement. Confidentiality agreements help preserve the essential novelty in a patent.
However, there is another important issue regarding ‘secret use’. Subparagraph 18(1)(d) of the Australian Patents Act 1990 states that:
“an invention is patentable, so far as is claimed in any claim, if it was not secretly used in the patent area before the priority date of that claim by, or on behalf of, or with the authority of, the patentee or nominated person…”
The prevailing authority on secret use in Australia is the Full Federal Court case of Azuko v Old Digger (2001) 52 IPR 75. It was held that the relevant question of whether secret use has occurred before the priority date (that is, the all-important date of filing the patent application) is whether certain commercial acts done before the priority date constitute a de facto extension of the patent monopoly. An extension of the monopoly usually requires the patentee to have “reaped a commercial benefit”.