Tuesday, 17th December, 2019

Grace period for New Zealand patent applications

To meet New Zealand’s obligations to the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), the New Zealand Patents Act 2013 was amended to allow a one-year grace period for patent applications.

Previously, any public disclosure of an invention made prior to filing a patent application to protect the invention would be prior art and prevent a person from obtaining a valid patent for that invention in New Zealand. There were only limited situations where a public disclosure could be disregarded, such as if the information disclosed was obtained unlawfully or in breach of confidence.

What has changed

Under section 9(1)(f) of the Patents Act 2013, the public disclosure of an invention will not form part of the prior art base for a patent application if the disclosure occurred during the one-year period immediately preceding the patent date and the disclosure was made by any of the following persons:

  • the patentee or nominated person;
  • any person from whom the patentee or nominated person derives title;
  • any person with the consent of the patentee or nominated person;
  • any person with the consent of any person from whom the patentee or nominated person derives title.

This means the grace period provision only applies to public disclosures:

  • made within one year before the date a complete specification is filed in New Zealand or a Patent Cooperation Treaty (PCT) application is filed (the grace period provision does not apply to filing a provisional specification);
  • made by the applicant or a person with the consent of the applicant; and
  • made on or after 30 December 2018, the date the new legislation came into effect.

How the grace period works

The grace period may be considered during examination of the patent application, or during subsequent opposition or revocation proceedings.

If the applicant wants to invoke the grace period provision, they may need to provide a statement that the invention had been publicly disclosed by or with the consent of the applicant during the one-year grace period. The statement must include evidence that the disclosure falls within the provisions of the relevant section and was not made public before 30 December 2018.

In practice, this means good records should be kept of any public disclosure if the grace period provision is to be relied upon.

The grace period provision does not appear to cover public disclosures made by a third party without the consent of the applicant. This could arise, for example, where a third party disclosure is made that is not in breach of confidence or unlawful. Such disclosures are also unlikely to be covered by the other provisions in New Zealand under which public disclosures can be disregarded.  

Australia

Australia has had a one-year grace period since 2002. The grace period provisions in Australia differ from New Zealand because they focus on the disclosed information, whereas the provisions in New Zealand focus on the person disclosing the information. Accordingly, the grace period provisions in Australia cover public disclosures made by the applicant, and disclosures made with or without the consent of the applicant (in contrast, a disclosure without the applicant’s consent in New Zealand may not be covered under the New Zealand provisions). 

What this means for you

A one-year grace period applies to New Zealand and Australia. However, other countries have different rules regarding grace periods. The table below sets out grace period provisions in other jurisdictions where patents are commonly filed:

Country

Grace period

United States

12 months

Canada

12 months

Japan

12 months

South Korea

12 months

Singapore

12 months

Many important jurisdictions, including Europe and China, have no grace period provisions, and publicly disclosing the invention before filing a patent application could prevent the applicant obtaining a granted patent in those jurisdictions.

In summary, grace period provisions are a useful ‘safety net’ should the applicant accidentally disclose their invention. However, the best practice is still to always file at least a provisional application before publicly disclosing an invention.