INSIGHT

NZ self-disclosure 'grace period' provisions take effect

Industrials Intellectual Property Patents & Trade Marks

In brief

On 30 December 2018, New Zealand introduced a one year 'grace period' for filing a patent application following an inadvertent public self-disclosure of the invention. Associate Claire Gregg takes a closer look at how the new provision protects applicants.

Background

As part of its obligations under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership, New Zealand has taken steps to protect patent applicants from their own inadvertent public disclosure by introducing new subsection 9(1)(f) into the Patents Act 2013 (the Act). Applicants can now invoke a one year 'grace period' for filing a complete specification following self-disclosure of the claimed invention in the prescribed circumstances.

The grace period

According to new ss 9(1)(f), when determining the prior art base for novelty and inventive step, a prior disclosure must be disregarded where that 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; or
  • any person with the consent of any person from whom the patentee or nominated person derives title.

The new self-disclosure grace period provision applies only to public disclosures of an invention made on, or after, 30 December 2018, for which a complete specification is filed within the subsequent one year. To enliven the grace period, the Intellectual Property Office of New Zealand (IPONZ) has published examination guidelines requiring the applicant to file:

  • a statement that the invention was publicly disclosed by, or with the consent of, the nominated person in the one-year period preceding filing date of the complete specification; and
  • evidence that the disclosure falls within the provisions of new ss 9(1)(f), and was not made public before 30 December 2018.

This information can be filed at IPONZ prior to examination, or in response to a relevant novelty and/or inventive step objection during examination.

Falling into line

The new ss 9(1)(f) supplements the existing provisions of ss (1)(a)-(e) of the Act, which set out the other circumstances under which a public disclosure must be disregarded for validity purposes including, for example:

  • disclosure of matter obtained unlawfully or in breach of confidence (one year);
  • disclosure of the invention at a specified exhibition (6 months); and
  • necessary public working of the invention for the purpose of reasonable trial only (one year).

The introduction of new ss 9(1)(f) brings New Zealand's grace period provisions somewhat into line with other jurisdictions such as Australia and the US, which protect against prior public disclosures both with and without the consent of the patentee or nominated person. However, each jurisdiction adopts a nuanced approach to the scope and construction of its grace period provisions, and other jurisdictions do not offer any grace period for applicant/inventor disclosure (eg, Europe).

How this affects you

We do not recommend that applicants/inventors rely on the grace period as a filing strategy. Instead, we recommend filing a provisional patent application before disclosing an invention publicly. However, if an inadvertent disclosure of an invention occurs, it is important to utilise the grace period safety net and file a complete application in New Zealand and/or any other relevant jurisdictions within the prescribed period to preserve any patent rights that might otherwise be lost.