New Zealand recently enacted a 12-month grace period for patents. Adding a grace period for patents in New Zealand is valuable and may allow you to protect your invention when previously you could not. However, the grace period does come with some warnings.
A grace period of 12 months is now available for patents in New Zealand. This means any disclosure through use or publication by you (as inventor), or your company, from 30 December 2018 onwards will not be used when assessing the novelty and inventive step of your patent application filed in New Zealand. However, to use the grace period you must file a patent application with a complete specification within 12 months of your first disclosure of that invention. You can only take advantage of the grace period in New Zealand if your disclosure occurred after 30 December 2018.
Importantly, a grace period does not protect your patent application from disclosure by a third party. You will still need to file a patent application before the third party discloses an invention similar to yours if you want to protect your invention. Therefore, if a document or use from a third party exists before you apply for patent protection, even if within the grace period, then that third party document or use will still be used to assess the novelty and inventive step of any patent for which you apply.
Other overseas countries with grace periods for patents include Australia, United States, and Japan, and therefore similar criteria protect you there. However, not all countries have grace periods, and therefore you will not be protected from your own earlier disclosure in those countries.
What is it, what does it protect, and what doesn’t it protect?
The base test for a patent is that it must be novel and inventive on the date it is filed compared to disclosures that existed before the application date for the patent. This includes the inventor or applicant’s own disclosures.
A grace period provides an exemption to this base test. It allows an applicant for a patent to ignore their own disclosures, provided they meet the criteria followed by the required actions within a specified time.
The criteria is that the disclosure was only made by any of the following persons:
The patentee or nominated person;
Any person from whom the patentee or nominated person derives title;
Any person with the consent of the patentee or nominated person; or
Any person with the consent of any person from whom the patentee or nominated person derives title.
The action they must perform is to make a patent application with a complete specification.
The time in which they must apply for the patent application is within 12 months of their first disclosure (for example, publication or use). To qualify for the grace period your use must also have been after 30 December 2019. This is because the grace period is not retroactive
Importantly, the grace period in New Zealand currently does not protect the patent application from public disclosure of the invention made by a third party.
We expect the New Zealand government will soon clarify this and other issues on grace periods.
The grace period in New Zealand also does not protect against your own prior secret use, which is a ground for opposition, re-examination, and revocation procedures.
The grace period is a backstop, not your Plan A
The availability of a grace period is great news for Kiwi innovators and potential patent applicants. However, a grace period does not necessarily guarantee patent protection internationally. Many countries, including China, Europe, and India do not have grace periods. This means that your own earlier disclosure will still be used against your patent application in these countries.
In addition, because you must file a complete specification to qualify for the grace period you cannot add to the patent application once it is filed.
For this reason we suggest the 12-month grace period is a fallback for accidental disclosures. We recommend filing a patent application before you disclose your invention.
How to use
If you have publicly disclosed your invention on or after 30 December 2018, you will have 12 months from the date of disclosure to file a patent application with a complete specification at IPONZ. You will also have the option of seeking protection in some other countries that provide similar provisions, including Australia, Japan, Korea, and the United States.
Introducing a grace period is part of New Zealand’s obligations under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP).
Please contact one of our patent experts if you have any questions, or would like to discuss this or any other matter further.