New Zealand introduces self-disclosure 12 month grace period

Effective 30 December 2018, New Zealand has expanded its grace period provisions to cover “self-disclosure” of inventions within 12 months of the filing date of a complete patent application in New Zealand. Importantly, the grace period applies only to public disclosures that occur on or after 30 December 2018.

Existing legislation already provided a 12 month grace period for unauthorised disclosures of an invention and a 6 month grace period for disclosures at a prescribed exhibition.

Under the new grace period provisions, the disclosure of an invention will not form part of the prior art base for a patent application if the disclosure occurred during the 1 year period (“the grace 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; or

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

The effect of the new grace period is that public disclosure of an invention by the persons indicated above will be disregarded for the purpose of deciding whether the invention is novel or involves an inventive step. Thus, if an inventor discloses their invention to the public anywhere and in any way before filing a patent application, they could still obtain a valid patent in New Zealand for that invention provided that a complete specification is filed within 1 year of making that disclosure.

There is no requirement to inform the Intellectual Property Office of New Zealand (IPONZ) of any prior disclosure at the time of filing. However, the IPONZ practice guidelines indicate that a patent applicant should provide a statement if the applicant wants to invoke the grace period. Such a statement may be provided to IPONZ before the start of examination or in response to an objection that the claimed invention is not novel or inventive in light of the disclosure.

The changes bring New Zealand practice closer to that of Australia, which also has a 12 month grace period under limited conditions.