Amazing Grace: New Zealand to provide for general patents grace period

Amendments to the Patents Act 2013 mean that from 30 December 2018, a general grace period of 12 months will be provided for in New Zealand. The disclosure of an invention by the Applicant, or a person with the Applicant's consent, within the 12 month period prior to the filing of a patent application will thus not constitute prior art for the purposes of the New Zealand application.

Important limitations

There are some important points to note about this provision:

  • The provision only applies to patent protection in New Zealand. Other jurisdictions, most notably the EPO, do not have such grace periods. Accordingly, best practice for applicants is still to file a patent application before disclosing the invention.
  • The 12 month period is calculated from the patent date, which will usually be the filing date of the complete application in question. Thus it is not sufficient to file a provisional application, or foreign priority document in the 12 months following the disclosure.
  • It only applies to disclosures made after 30 December 2018. Disclosures made prior to this date will continue to be treated as prior art.

Office Practice

The Intellectual Property Office of New Zealand has issued some guidance around this provision, available here. In particular, before disregarding a citation, the Office will require a statement outlining the specific part of the grace period provision relied upon and evidence that the disclosure falls within that provision. This can be provided prior to examination commencing or during examination.

Unanswered Questions

There are some questions about the extent of the grace period provision, which will need to be answered in due course.

1. What constitutes a "disclosure"?

The term "disclosure" fits with the wording of the remainder of section 9 of the Act, which contains the exclusions to the prior art base. However, there is no clear definition of disclosure. It seems likely that the term is intended to cover both prior publication and prior use (in line with what is considered the prior art base). However, the Act does not distinguish between mere use and prior commercial use, e.g. sale of the invention. Accordingly it is possible that public sale of the invention during the grace period by the applicant (or with their consent) may be able to be disregarded under the grace period provisions.

2. Does the grace period apply to "whole contents" citations?

Section 8(2) allows that the prior art base for novelty purposes includes information contained in a complete specification having an earlier priority date, but not published until after the priority date of a claim in question. Provisions similar to the present grace period in Australia have been used to exclude a "whole of contents" citation made by the same applicant from the consideration of novelty. It is possible that a similar approach will apply in New Zealand.

3. Does the grace period apply to prior secret use?

It is a ground for opposing grant of a patent, re-examination, and revocation that the invention was secretly used in New Zealand before the priority date of the claim in question. On its face the grace period is not relevant to prior secret use because it does not form part of the definition of prior art base in section 8. However, this leads to the somewhat incongruous outcome that public disclosure, if made during the grace period, does not invalidate the patent, but prior secret use during the same period does.

As the grace period only applies to disclosures made after 30 December 2018, it is likely to be some time before answers to the above questions become known.

In the meantime, if you have any questions about the new grace period provision or how it will apply under New Zealand law, please do not hesitate to contact us.

David Nowak - December 2018

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