New Zealand to implement a new one-year patent grace period on 30 December 2018
New Zealand will implement a new one-year grace period within which to file a patent application for an already disclosed invention, when the Comprehensive and Progressive Agreement for Trans-Pacific Partnership enters into force on 30 December 2018.
Under the new grace period provisions, a self-originating prior disclosure of an invention is to be disregarded in an assessment of whether the invention is novel or involves an inventive step. For the provisions to apply, the disclosure must be one which was made by or with the consent of the patentee or “nominated person” (the latter typically being the patent applicant) or the patentee/nominated person’s predecessor in title, and the New Zealand patent application must be filed within one year of the disclosure. (New Zealand already has grace period provisions in respect of disclosures of matter deriving from the inventor(s) and obtained unlawfully or in breach of confidence.)
The new grace period provisions will not be retroactive; only disclosures on or after 30 December 2018 can be disregarded under the provisions. Further, it is a New Zealand complete application which must be filed within the one-year period for the provisions to be invoked; the filing within that period of a New Zealand provisional application, or any application outside of New Zealand, to establish a priority date effective in New Zealand is not of itself sufficient. The complete application can be either a national application, filed at the Intellectual Property Office of New Zealand, or an international (PCT) application which is progressed into a New Zealand national phase.
The new grace period provisions will be welcomed not only by patent applicants who have disclosed their inventions before filing a patent application but by many in the patent attorney profession both in New Zealand and elsewhere, and will align New Zealand with several countries, including Australia and the United States, which provide grace periods for filing after a self-originating disclosure of the invention. That said, it is always preferable that the patent application be on foot before any non-confidential disclosure of the invention, given in particular that third parties which are availed of the invention and either exploit the invention or take “definite steps” to do so before the application is filed can thereby create a “prior user” right to exploit the invention on a continued basis, despite a patent being granted under the new provisions. Also, some of New Zealand’s largest trading partners (including in particular China and countries signatory to the European Patent Organisation) do not provide a corresponding grace period.
The new grace period provisions apparently do not apply to “secret use” of an invention in New Zealand before the priority date – on the basis of which use a New Zealand patent is revocable or the grant thereof opposable – so that, whereas public working of the invention within the one-year period prior to the New Zealand filing date can attract the provisions, concealed working of the invention within that period cannot. Also, there is uncertainty as to whether under the new provisions it is a disclosure only of the invention itself, or rather a disclosure of any invention (e.g. a similar but not identical one), which can be disregarded. (Australia’s corresponding grace period provisions were, under the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, extended so as to apply to secret use of an invention (in Australia) before the priority date and adjusted to eliminate a similar uncertainty.)