RECENT NEWS

New Zealand’s New Grace Period

New Zealand will shortly implement a grace period for disclosures by an inventor or applicant made in the year before a patent application is filed.

This follows from New Zealand ratifying the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) on 25 October 2018, and the CPTPP being scheduled to enter into force on 30 December 2018.

This article discusses how the new New Zealand grace period will work.

Current situation

Currently, any public disclosure of an invention could prevent an applicant obtaining a New Zealand patent for that invention. There are only very limited situations in which disclosure can be disregarded (such as being in breach of confidence). This change will align New Zealand with countries like Australia, the United States, and Japan.

Many jurisdictions (notably Europe and China) still have limited, or no, grace periods for disclosures. A disclosure before filing a patent application can therefore still be damaging, and should be avoided if possible.

The new law

When in force, the Patents Act 2016 will have a new grace period provision in section 9(1)(f). This will provide:

(1) For the purposes of section 8, the disclosure of matter constituting an invention must be disregarded if 1 or more of the following applies:

    (f) that disclosure occurred during the 1-year 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:
        (iv) any person with the consent of any person from whom the patentee or nominated person derives title.

Which patent applications can use the grace period?

A patent application must have a patent date within 1 year of the disclosure. The patent date must also be on or after the law change entering into force to use the grace period (future Schedule 1AA(4) of the Patents Act 2016).

The patent date is the date a complete specification was filed (s 103(1)(a)) or that the PCT application was filed (s 46). The filing date of a provisional specification, or any other priority date, is not the patent date.

The provision is retrospective, in that disclosures before the new law was in force are still covered by the grace period, as long as the patent date is on or after the law change.

If you wish to take advantage of the grace period, a complete specification must therefore be filed within one year of the disclosure. It may be worth filing a PCT application in the first instance to use the grace period in multiple countries at once.

Who can disclose?

The new provision expressly covers disclosures made by the patentee (or nominated person who will receive the granted patent, if different) (s 9(1)(f)(i)), the inventors (or anyone else the patentee derives title from) (s 9(1)(f)(ii)), and anyone else with consent of these parties (s 9(1)(f)(iii)–(iv)). This seemingly covers anyone directly involved in a patent application.

This complements the existing provisions which provide a 1-year grace period for disclosures made unlawfully or in breach of confidence (s 9(1)(a)–(b)).

What about third parties?

If a third party receives the inventor’s public disclosure, then on-discloses the information they received, would this third party on-disclosure be covered by the grace period?

Maybe not. A strict reading of the provision would suggest third party on-disclosures are only covered if the third party has the consent of the patentee or inventor. How this works in practice is unclear. Can an unknown party in unknown circumstances receive consent? Does the act of making the information available to the public give implied consent to the public generally for on-disclosure? Would a copyright notice that the information is not to be copied be equivalent to an express lack of consent?

For example, a common scenario would be when an inventor discloses their invention publicly at a conference, and a third party (unknown to the inventor) then publishes a summary of the invention. It is unclear if the third party summary is covered by the grace period or whether it would be prior art.

This exposes a potential hole. Some disclosures may not have consent (and therefore cannot use the new s 9(1)(f) grace period) but are not in confidence or obtained unlawfully (and therefore cannot use the existing s 9(1)(a)–(b) grace period). These disclosures will therefore still be prior art.

Whether third party on-disclosures are covered by the grace period may need to be settled by the courts. Interestingly, the underlying text of the treaty contains no reference to consent being required for the grace period to apply. Instead, the treaty requires that disclosures by “a person who obtained the information directly or indirectly from the patent applicant” must be disregarded (Trans-Pacific Partnership Agreement art 18.38). Depending on the interpretation by the courts, it may therefore be that New Zealand law is not fully in compliance with this part of the treaty.

In the meantime, to mitigate the potential risk of third party on-disclosure, patent applications should be filed as soon as possible after a public disclosure.

How does this compare with Australia?

Australia has had a 1-year grace period since 2002.

The Australian grace period provision is worded differently. The Australian grace period covers information made publicly available by or with the consent of an inventor or applicant (Patents Act 1990 (AU) s 24(1)(b)). The Australian provision therefore focuses on the information disclosed, rather than who made the disclosure. This side-steps the issue of whether a third party needs consent for the grace period to apply to on-disclosure, as long as the initial disclosure was made with consent.

It appears the New Zealand provision was based on the Australian provision. But the change in wording to focus on the person disclosing rather than the information disclosed may be meaningful. It may suggest an intention from Parliament that unconsented third party on-disclosures are not covered by the grace period, and therefore should still be usable as prior art. It remains to be seen how this is applied by the courts in practice.

When will it come into force?

Likely on 30 December 2018.

The CPTPP was ratified by its sixth member on 30 October 2018. This triggers the CPTPP entering into force 60 days later: on 30 December 2018.

The New Zealand implementing legislation is now waiting to be brought into force by order in council. This will likely set a date of 30 December 2018, to coincide with the CPTPP coming into force. This will likely be confirmed shortly by the government.

UKIPO Update on Brexit

As the Brexit date approaches, recent reports indicate that the UK Government will offer automatic and free conversion of EU registered trade marks into UK registered trade marks.

But how accurate is this?

White Paper on Future Relationship issued by UK and EU 12 July 2018

The UK Government continues to negotiate with the EU as the Brexit date approaches and confirms a desire to minimise disruption to businesses.

This does not go so far as to confirm free and automatic conversion of trade marks.

The White Paper rather proposes that the UK should continue to have an active relationship with the EU to support EU and UK rights holders. It still remains to be seen which option will be followed.

What Should You Do Now – August 2018?

We caution against relying on conversion of rights by the UK Government. In order to put your business in the best position, we recommend following the same steps noted in our previous article:

  • Identify your true market and make sure your protection covers that market.
  • Keep your UK and EU trade marks in force. If you have a trade mark registration which is due for renewal, and the registration reflects what you are using, then we recommend you renew your registration and do not allow it to lapse.
  • Update any out of date Register rights. This could mean new UK or EU applications, either national filings or under an application under the Madrid Protocol system.
  • And finally, do not forget about third party agreements – review what you have and update what you need to update now!

And throughout all these steps, remember that we are here to help!

Ellis Terry Overturns Restrictive Amendment Practice

Applicants in New Zealand have been suffering under a restrictive amendment practice adopted by IPONZ that would have left applicants unable to remedy potentially fatal deficiencies. Ellis Terry recently took a case1 to a hearing that has overturned this practice.

New Act and Regulations

Under the new Patents Act 2013 it is a requirement that all claims must be “supported” by matter disclosed in the specification. The regulations governing the process for amendment of the specification also use the word “support”.

IPONZ Practice

IPONZ interpreted the regulations to require “support” (as used in the Act) for any amendment to either the description or claims. This practice was adopted despite the fact that the Act specifically provides for the post-dating of amendments; post-dating could clearly only occur in the case of unsupported amendments.

The issue in question

It is uncertain under the new Act whether classical inutility (where a claim is invalid if it fails to meet the objects of the invention) still exists, although the IPONZ website says that classical inutility does still apply, as is the case in Australia by virtue of an explanatory memorandum to a similar section.

In the case in question an amendment was requested to amend objects of the invention by adding the alternate object “to at least provide the public with a useful choice”. Such amendment had been routinely allowed under the previous Act.

IPONZ objected that there was no “support” for the added words. It is true that there was no wording that could be pointed to that provided “support” (as used in the Act) for this wording. Failure to allow such an amendment could have left the applicant with an incurable flaw that could render its patent invalid with no way to remedy the situation. This would have put foreign applicants, unaware of this arcane ground of invalidity, in a perilous position.

Decision

Upon reviewing the statutory context the hearing officer ruled that the regulations did not impose a substantive requirement for specific support for every amendment. Rather, the regulations are procedural and are intended to expedite the examination process; an applicant relying on support in the original specification for an amendment should point to support so an examiner does not have to ‘go hunting’. The hearing officer indicated that support may not be required for deletions or amendments to improve conciseness. The addition of ‘or to at least provide the public with a useful choice’ was allowed.

This is a welcome decision that will relieve applicants that have been faced with exasperating support objections.