New Zealand and Australian Grace Period

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The Australian patent system has a ‘grace period’ for public disclosure of an invention without affecting the novelty or inventiveness of a patent application. This grace period applies when a standard or innovation patent is filed with 12 months of the disclosure. The grace period covers public disclosure of an invention when the disclosure is:

  • made by the Applicant;
  • made with the consent of the Applicant; or
  • made without the consent of the Applicant.

Essentially, the above public disclosure can be ignored during prosecution of the patent application. The Australian grace period provisions are recited in section 24(1)(a) of the Patents Act 1990. Section 24(1)(a) recites:

Validity not affected by making information available in certain circumstances

(1) For the purpose of deciding whether an invention is novel or involves an inventive step or an innovative step, the person making the decision must disregard:

(a) any information made publicly available in the prescribed circumstances, by or with the consent of the nominated person or patentee, or the predecessor in title of the nominated person or patentee; and

(b) any information made publicly available without the consent of the nominated person or patentee, through any publication or use of the invention by another person who derived the information from the nominated person or patentee or from the predecessor in title of the nominated person or patentee;

but only if a complete application for the invention is made within the prescribed period.

Prior to 30 December 2018, New Zealand did not have such provisions, such that the disclosure of an invention within a 12 month period prior to the filing of an application could only be disregarded under certain circumstances, such as unauthorised disclosure or reasonable trial of the invention.

However, after the ratification of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership on 25 October 2018, New Zealand introduced a 12 month grace period provision into the Patents Act. This came into force on 30 December 2018.

This grace period provision is set out in section 9(1)(f) of the Patents Act, which recites:

Disclosure to be disregarded in certain circumstances

(1) For the purposes of section 8, the disclosure of matter constituting an invention must be disregarded if 1 or more of the following applies:

(f) that disclosure occurred during the 1-year period immediately preceding the patent date and the disclosure was made by any of the following persons:

(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;

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

The New Zealand grace period provisions are now more aligned with the Australian grace period provisions.

This new provision appears to relate to any disclosure from the Applicant(s) and inventor(s) and also to disclosure with the consent of the Applicant(s) and inventor(s). Note that unauthorised disclosure or reasonable trial of the invention is still covered.

It is also important to note that the grace period cannot be relied upon retrospectively and only applies to disclosures that occur on or after 30 December 2018. In short, the new grace period provisions do not apply to any disclosure before 30 December 2018 regardless of when the patent application is filed.

Applicants of patent applications filed after 30 December 2018 are now provided with a mechanism to address self-disclosure. Consequently, inadvertent self-disclosure will not become prior art that can be considered during prosecution of the patent application as long as the above requirements are met. This is an encouraging development for patent Applicants.

Other jurisdictions may or may not have grace period provisions. For example, Europe and China do not have any grace period provisions. As such, it is preferable to not rely on grace period provisions, and they should only be used as a last resort.

Please do not hesitate to contact Spruson and Ferguson if you have any questions regarding this new development.

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