TPP delivers 12-month grace period for New Zealand5 December 2018. Posted by Jason Rogers.
The Trans-Pacific Partnership, a US-lead trade deal covering 40% of the world’s economy, was negotiated in 2015 by 12 countries including the US, Canada, Mexico, Japan, Australia and New Zealand.
The aim of the TPP was to strengthen economic ties and boost growth between the member countries, including by reducing trade tariffs.
The deal was a key part of Barack Obama’s Asia policy, yet within the first few days of his presidency Donald Trump pulled out of the deal, criticizing the TPP as being a potential disaster for the US economy.
In March 2018, the TPP countries proceeded without the US to sign a new free-trade deal called the Comprehensive and Progressive Agreement for Trans-Pacific Partnership. The agreement, ratified on 31 October 2018 by Canada, Mexico, New Zealand, Australia, Singapore and Japan, will come into force on 30 December 2018. The remaining 5 TPP countries are yet to join the CPATPP.
More background on the CPATPP and the benefits to New Zealand can be found here.
Changes to New Zealand’s Intellectual Property law
The Comprehensive and Progressive Agreement for Trans-Pacific Partnership is being introduced into New Zealand law on 30 December 2018 by the Comprehensive and Progressive Agreement for Trans-Pacific Partnership Amendment Act.
The CPATPP Amendment Act amends 10 New Zealand Acts including the Copyright Act 1994, Patents Act 2013 and Trade Marks Act 2002. Amendments to the Patents Act are discussed below, while amendments to the Copyright Act and the Trade Marks Act will be addressed in separate communications.
Introduction of a 12-month Grace Period
A non-confidential disclosure prior to filing an application can therefore leave a patent subsequently granted on the application invalid, since following the disclosure the invention is no longer new. There are some limited exceptions to this rule, however, these exceptions apply only in very specific circumstances.
By amendment under the CPATPP Amendment Act, from 30 December 2018, a public disclosure by the inventor (or applicant deriving title from the inventor) will not prevent valid patent protection in New Zealand if a complete patent application is filed within 12-months of the disclosure. This aligns New Zealand’s patent system with other countries such as the US and Australia which already have 12-month grace period in place.
The addition of a 12-month grace period to New Zealand’s patent system is good news, especially for individual and SME patent applicants. It is not uncommon for an individual or start up business new to the patent process to fail to appreciate the importance of keeping an invention confidential at least until a patent application is filed.
The new 12-month grace period provision will allow valid patent protection to be sought in New Zealand even when there has been a non-confidential disclosure. Typical non-confidential disclosures include offers for sale, marketing, and public use and display of the invention.
But Be Aware - if you want international protection in multiple markets
In many jurisdictions, most notably China and Europe, a patent application must be filed before disclosure has occurred anywhere in the world - i.e. there is no grace period.
The 12-month grace period provision should therefore only be relied on as a last resort or fall-back option when there has been an inadvertent disclosure, or disclosure is necessary for some commercial reason. In general, professional advice should be sought before intentionally relying on the grace period provision.
A 12-month grace period is a positive addition to New Zealand’s patent system which benefits applicants. The inclusion of a 12-month grace period is particularly beneficial for individuals and small enterprises who are generally at higher risk of inadvertent disclosure or are more likely to want to disclose prior to filing a patent application.
Caution should be exercised however if wishing to rely on the grace period provision, and an international filing strategy should be determined to understand the impact of an early disclosure on patent protection in other countries.
The above information provides a general overview of the changes to New Zealand’s patent system under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership. Please contact us for more detailed information relating to the changes to New Zealand’s intellectual property legislation being introduced by the CPATPP.