Ideally, a patent application for an invention should be filed before the invention has been publicly disclosed. Failure to do so would result in the prior public disclosure of the invention to be cited as “prior art” which will be taken into account when assessing whether the claimed invention is novel and inventive. Notably, public disclosure may even include sharing of information about the invention with a single person, provided that person is able to use the information freely without an obligation of confidence.
If your invention has already been publicly disclosed (with or without your consent) prior to the filing of a patent application for the invention, here are some options on how to obtain patent protection for your invention:
If it has been less than 12 months since the first public disclosure:
- Grace period – In Australia and New Zealand, a 12 month grace period for prior disclosure applies, whereby if an applicant files a complete patent application within 12 months from the first public disclosure of the invention, then the earlier disclosure will not be considered to be prior art to the patent application. Accordingly, if your invention has been publicly disclosed, it is highly recommended to engage a Patent Attorney as soon as possible to ensure that the patent application is filed by the 12 month deadline.
It should be noted that the grace period provisions in New Zealand for prior disclosure by or with the consent of the inventor(s) or the applicant came into effect on 30 December 2018 and apply only to public disclosures that occur on or after 30 December 2018.
If it has been more than 12 months since the first public disclosure:
- Extension of time – In Australia, it is possible to have the grace period for prior disclosure extended in certain circumstances. The circumstances for which such an extension may be granted include situations where an error or omission has occurred, or where the delay occurred due to circumstances beyond a person’s control. A declaration clearly setting out the circumstances that led to the delay must be provided to the Patent Office for the extension to be granted. However, it is not possible to obtain an extension to the grace period in New Zealand as there are no similar provisions in the law.
- Innovation Patents – If an extension of time for the grace period deadline cannot be obtained, the next best option would be to file an innovation patent for the invention including at least one feature that was not publicly disclosed and could be established as an ‘innovative’ feature during prosecution, thereby providing at least limited protection for the invention. However, although the threshold for an ‘innovative step’ is lower than that for an ‘inventive step’, an Innovation patent is valid only for 8 years. This option also does not apply to New Zealand as it does not have an innovation patent system (or equivalent thereof).
Depending on the extent of the prior disclosure, it may even be advisable to file a complete application if the relevant inventive feature(s) was not actually disclosed. For example, a photo of an inventive device published publicly would not affect the patentability of the device if the inventive feature lies in an inner mechanism of the device, assuming the photo only shows the external features of the device.
The above information is relevant
for Australia and New Zealand. If patent protection in other countries is to be
sought, as the grace period provisions are different in each country, a careful
assessment needs to be made in each case to determine whether or not the grace
period applies. Further, most other countries do not have an Innovation patent
system similar to Australia and do not grant extensions to the grace period.
 Fomento Industrial SA v Mentmore Manufacturing Co Ltd  RPC 87.
 Patents Act 1990 (Cth) s 24, Patents Act 2013 (NZ) s 9.
 Patents Act 1900 (Cth) s 223