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New grace period provides limited relief for pre-filing disclosures

On 30 December 2018 the New Zealand Patents Act 2013 was quietly amended to implement a general 12 month “grace period” for complete patent applications.  This amendment to the Patents Act was as a result of the ratification of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP), which also entered into force on 30 December 2018.

A grace period provides a period of time for filing a patent application after a public self-disclosure of an invention.  Provided the complete application is filed within the 12 month period, the disclosure won’t affect the novelty and inventiveness of the patent application.

Previously New Zealand has not offered a grace period for general self-disclosure.  It was not uncommon for enthusiastic inventors to find themselves unable to protect their invention in New Zealand because they’d publicised their great idea before approaching a patent attorney.  The addition of a grace period in NZ is good news for these inventors!

However, disappointingly, the scope of the New Zealand grace period is unclear.  The wording of the Act focuses on the person who makes the disclosure.  The disclosure must be made by:

(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, or

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

Therefore, on its face, the New Zealand grace period does not appear to cover subsequent disclosure of an invention by a third party.  This might include lawful reporting of the disclosure or a review of the disclosed invention.

It is likely that the Act is intended to cover these types of third party disclosures for consistency with Article 18.38 of the CPTPP (which states that the grace period must cover disclosures “made by the patent applicant or by a person that obtained the information directly or indirectly from the patent applicant”). However, the law on this point is unsettled and remains unclear for now.

The new grace period also does not appear to cover secret use of an invention before filing the application.  Prior secret use of an invention is a ground for opposition of a patent application, re-examination, and revocation.

While we welcome the addition of a grace period in New Zealand, we always recommend filing a patent application before disclosing your invention.  Not all countries offer a grace periods, and grace period provisions vary between countries.  However, if you find there has been an inadvertent self-disclosure that was made after 30 December 2018, the new grace period means you may still have the option to file a New Zealand patent application.

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