A grace period for patent applications in New Zealand will be introduced on 30 December 2018.

On that date, sections 71, 72 and part of section 77 of the Comprehensive and Progressive Agreement for Trans-Pacific Partnership Amendment Act 2018 (the CPTPP Act) will come into force. More about this can be read here.

Section 72  of the CPTPP Act inserts a new section 9(1)(f) into the Patents Act 2013. This new section provides that disclosure of an invention will not form part of the prior art base for a patent application if the following conditions are met:

The disclosure occurred during the 1-year period (“the grace period”) immediately preceding the patent date [1] and the disclosure was 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:
• any person with the consent of any person from whom the patentee or nominated person derives title.

The effect of this grace period for patent applications in New Zealand is that if an invention is publicly disclosed by any of the persons described above and a complete specification claiming that invention is filed within 1 year of that disclosure, the disclosure must be disregarded for the purposes of deciding whether the invention is novel or involves an inventive step. This means that if an inventor discloses their invention to the public anywhere and in any way before filing a patent application, they could still obtain a patent in New Zealand for that invention provided that a complete specification is filed within 1 year of making that disclosure.

The grace period applies only to public disclosures that occur on or after 30 December 2018.

Most countries don’t have grace periods. It is recommended that you contact us before you make any disclosure that could ruin the opportunity to obtain global patent protection.