New Zealand to introduce a one-year grace period

Legislative changes to the Patents Act 2013 following CPTPP ratification

As a result of the ratification of the CPTPP, the implementing legislation Comprehensive and Progressive Agreement for Trans-Pacific Partnership Amendment Act 2018 (the “CPTPP Act”) will come into force on 30 December 2018. Amongst other legislative changes, the CPTPP Act amends the Patents Act 2013 to introduce a grace period for disclosures by an inventor or applicant made within 12 months before filing a complete patent application.

What is a grace period?

A grace period allows for public disclosure of an invention (under certain circumstances) without affecting the novelty and inventiveness for a subsequent patent application, provided the application is filed within a prescribed timeframe.

Currently, there is no general grace period as such against self-disclosure in New Zealand. However, the disclosure of an invention in the twelve-month period before the filing of an application may be disregarded as prior art under particular circumstances (e.g. unauthorised disclosure or reasonable trial of the invention). A disclosure of an invention at an officially gazetted international exhibition in the six-month period before the filing of an application may also be disregarded as prior art.

As of 30 December 2018, section 9(1)(f) of the Patents Act 2013 will outline the new grace period as follows:

9 Disclosure to be disregarded in certain circumstances

(1) For the purposes of section 8, the disclosure of matter constituting an invention must be disregarded if 1 or more of the following applies:

…

(f) that disclosure occurred during the 1-year period immediately preceding the patent date and the disclosure was made by any of the following persons:

(i) the patentee or nominated person:

(ii) any person from whom the patentee or nominated person derives title:

(iii) any person with the consent of the patentee or nominated person:

(iv) any person with the consent of any person from whom the patentee or nominated person derives title.

The disclosure

The new grace period essentially covers any disclosure from any persons directly involved in the patent application (e.g. the inventor(s) or applicant(s)) including those persons with consent of anyone involved. This is in contrast to disclosures obtained unlawfully or in breach of confidence which are already covered by sections 9(1)(a) and (b) of the Patents Act 2013. The patent date refers to the date at which a complete New Zealand application is filed (e.g. date of filing a Convention application or a PCT application, and not a provisional filing date), which must be within twelve months of the disclosure.

Importantly, the new grace period is not retrospective and applies only to public disclosures that occur on or after commencement of the CPTPP Act, namely after 30 December 2018. As such, applicants cannot rely on the new grace period provisions during examination if the disclosure was made prior to this date, even if the complete patent application/PCT application was filed within twelve months of the disclosure and on or after 30 December 2018.

Comparison with Australian grace period provisions

The new grace period provisions in New Zealand are similar to section 24(1)(a) of the Patents Act 1990 which disregards any information made publically available by or with the consent of the inventor, applicant, or nominated person thereof. However, rather than focusing on the information being disclosed, the New Zealand provision focuses on the person making the disclosure. As such, it is understood that once the disclosure of matter is made by the inventor, applicant or nominated person thereof, an on-disclosure by a third party is still likely covered by the grace period provisions in New Zealand. This understanding is also consistent with the wording of Article 18:38 of the CPTPP and its explanatory footnotes. While it was likely that such disclosures are intended to be covered, this is currently unsettled law.

Summary

It is pleasing to see New Zealand introduce a one-year grace period which will provide applicants with a mechanism to address inadvertent self disclosures becoming prior art that impact on pursuing patent protection. To obtain the benefit of the grace period a complete application must be timely filed within twelve months of the disclosure. However, it may be difficult in some circumstances to establish that a disclosure was made by the inventor or applicant, especially if the information was on-disclosed by a third party (such as a review article).

It is best practice not to rely on any grace periods and to file at least a provisional patent application before making any public disclosures. Grace period provisions and requirements can vary internationally and are not available in many countries. However, should an inadvertent self disclosure arise, prompt filing of a complete patent application (e.g. a New Zealand Convention application or a PCT application) within 12 months after the public disclosure can now satisfy the requirements of New Zealand’s new grace period provisions.

If you have any questions about New Zealand patent practice, please contact us.