Grace Periods in Australia and New Zealand

Australia

Australia has grace period provisions that apply to any information made publicly available by, with or without the consent of the nominated person or the patentee, or their predecessor in title (including the inventor), during the 12-month period preceding the filing of a complete patent application. Such information must be disregarded for the purposes of deciding whether an invention is novel or involves an inventive/innovative step.

It is important to note that the information made publicly available is not limited to the publication or use of the invention, and includes information published in a “whole of contents” citation (irrespective of whether the citation was published before or after the filing date of the application). As such, invoking the grace period can be a useful tool for overcoming a whole of contents novelty objection when the cited patent document is a self-filing or has a common inventor.

It is also important to note that the filing of a provisional/priority application is not sufficient to trigger the grace period provisions (unlike the US and other jurisdictions). Instead, the grace period only applies to the 12-month period preceding the filing of an Australian complete application or a PCT application designating Australia. However, Australia’s extension of time provisions may be invoked if it can be argued that failure to file the complete application within the 12-month period resulted from an error or omission.

New Zealand

Previously, New Zealand only had grace period provisions that applied to:

  • disclosure of matter obtained unlawfully or in breach of confidence (12 months);
  • disclosure of the invention at a specified exhibition (6 months); and
  • necessary public working of the invention for the purpose of reasonable trial only (12 months.

However, amendments to the Patent Act in 2018 introduced grace period provisions that also apply to self-disclosures. As amended, the grace period also applies to a disclosure that occurred during the 12-month period immediately preceding the effective filing date, wherein 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; or
  • any person with the consent of any person from whom the patentee or nominated person derives title.

However, the self-disclosure provisions only apply to public disclosures that occurred on or after 30 December 2018.

As for Australia, the filing of a provisional/priority application is not sufficient to trigger the grace period provisions. Instead, the grace period only applies to the period preceding the filing of a New Zealand complete application or a PCT application designating New Zealand.