Grace Periods in Australia and New Zealand
New Zealand has implemented a 12-month grace period for disclosures of an invention that occur on or after 30 December 2018. Australia has had a grace period since 2002. Perhaps surprisingly, given the moves to harmonise procedures in the two countries and the creation of a unified patent attorney profession, the New Zealand legislation differs substantially from the Australian provisions.
On-disclosure without consent
The new grace period in New Zealand covers disclosures by the patent applicant or anyone from whom the applicant derives titles (such as the inventor). Disclosures made by a third party with the consent of the patent applicant or a person from whom they derive title may also be excused. A disclosure made unlawfully or in breach of confidence will also be disregarded. However, consider the situation where an inventor discloses the invention to a conference and a summary of the disclosure is published, such as by a conference attendee on social media. The disclosure made by the conference attendee seems not to be made in breach of confidence, but nor is it made with the explicit consent of the patent applicant. While the disclosure by the inventor can be disregarded if a patent application is made within 12 months, a strict interpretation of the new legislation could mean that the publication made by the conference attendee will prior publish the patent application.
In Australia the legislation refers to the information made available by a disclosure, rather than to the disclosure itself. Therefore, when a disclosure is made the relevant information has become available. A subsequent disclosure of the type discussed above would not seem to matter as the information is not different, and the release of that information has already been excused.
Invoking the grace period
The Intellectual Property Office of New Zealand (IPONZ) has indicated that a patent applicant can invoke the new grace period provision if they may provide a statement that the invention had been publicly disclosed by or with the consent of the nominated person in the 12-month period prior to the filing date of the complete specification. The 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. The statement must include evidence that the disclosure falls within the new provisions.
In Australia, Examiners generally do not rely on the grace period in the first instance to disregard a publication. Instead they will cite the publication and await a rebuttal setting out all the facts relevant to the case.
Australian grace period can be longer than 12 months
The period for making a complete application for the invention disclosed is ordinarily 12 months from the day the information was made publicly available. However, the period can be longer:
- where the information is made available because an invention is displayed at a recognised exhibition;
- where the information has been made publicly available in a paper (a) read before a learned society or (b) published by or on behalf of a learned society; or
- the information has been made publicly available because the invention was worked in public for the purposes of a reasonable trial of the invention and, because of the nature of the invention, it was reasonably necessary for the working to be in public.
In the case of (i) and (ii), the requirement is that the basic application (or an Australian provisional application) be made within 6 months of the disclosure. In the case of (iii), the basic application (or provisional application) must be made within 12 months of the start of the public working. A complete application made within 12 months of the basic application (or provisional application) and claiming priority from it will not be invalidated by the information disclosed.
While (i) and (iii) are concerned with very specific instances of use, the learned society provision covers papers published by or on behalf of learned societies. Many journals of note are published by commercial publication houses at the behest of learned societies (for example the Royal Society of Chemistry publishes 45 peer reviewed journals) and articles published in such journals up to 18 months before the complete application is filed can be excused under this provision.
In summary, there is a complexity to the Australian and New Zealand grace periods that seems unnecessary given the close ties between the countries. However, while the differences may be confusing, these are “saving” provisions which rescue an otherwise invalid patent and so there is unlikely to be impetus for change.