Section 9: Disclosure to be disregarded in certain circumstances

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

(a) that disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was due to, or made in consequence of, the matter having been obtained unlawfully or in breach of confidence by a person from—

(i) the inventor; or

(ii) any other person to whom the matter was made available in confidence by the inventor; or

(iii) any other person who obtained it from the inventor because the person or the inventor believed that the person was entitled to obtain it; or

(iv) any other person to whom the matter was made available in confidence by any person referred to in subparagraphs (i) to (iii) or in this subparagraph; or

(v) any other person who obtained it from any person mentioned in subparagraphs (i) to (iv) because the person or the person from whom the person obtained it believed that the person was entitled to obtain it:

(b) that disclosure occurred during the 1-year period immediately preceding the filing date of the patent application and the disclosure was made in breach of confidence by a person who obtained the matter in confidence from the inventor or from any other person to whom it was made available by, or who obtained it from, the inventor:

(c) that disclosure was due to the communication of the matter to a government department or to any person authorised by a government department to investigate the invention or its merits, or to anything done, in consequence of that communication, for the purpose of the investigation:

(d) that disclosure occurred during the 6-month period immediately preceding the filing date of the patent application and that disclosure was due to, or made in consequence of,—

(i) the display of the invention with the consent of the inventor at a specified exhibition; or

(ii) the use of the invention with the consent of the inventor for the purposes of a specified exhibition in the place where it is held; or

(iii) the publication of any description of the invention in consequence of its display or use at a specified exhibition as referred to in subparagraph (i) or (ii); or

(iv) the use of the invention, after it has been displayed or used at a specified exhibition as referred to in subparagraphs (i) and (ii) and during the period of the exhibition, by any person without the consent of the inventor:

(e) that disclosure was due to, or made in consequence of, the invention being publicly worked, at any time during the 1-year period immediately preceding the filing date of the patent application, by any of the following persons if the working was effected for the purpose of reasonable trial only and if it was reasonably necessary, having regard to the nature of the invention, that the working for that purpose should be effected in public:

(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.

(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.

2) For the purposes of this section,—

inventor, in relation to an invention,—

(a) means the actual deviser of the invention; and

(b) includes any owner of the invention at the relevant time.

specified exhibition means an exhibition (whether held in New Zealand or elsewhere) that is declared to be an international or industrial exhibition by the Commissioner in a notice that is publicly notified.

Introduction

Purpose of this guideline

1. This practice guideline aims to outline the circumstances in which certain disclosures may be disregarded under section 9, and how applicants should request to have such disclosures disregarded.

General information about section 9

2. Section 9 of the Patents Act 2013 sets out the specific circumstances where certain disclosures should not be considered for novelty or inventive step.

3. Sections 9(1)(a) and 9(1)(b) are concerned with the manner in which the information of the invention was obtained or disclosed.

4. Sections 9(1)(c)-(f) are concerned with special circumstances where the invention may have been disclosed prior to the filing date of the application.

Requesting to have certain disclosures disregarded

5. To have a disclosure disregarded, a statement outlining the relevant grounds, the full particulars and supporting evidence must be provided to IPONZ. Requests may be made pre-emptively or filed as part of an objection response to an examination report.

6. Acceptable forms of evidence include:

• A statutory declaration.
• An affidavit.
• Relevant publications.
• Relevant news items.
• A transcript of relevant communication.
• Any other disclosure with a clear publication date.

7. Requests to disregard certain disclosures can be filed as ‘evidence’ via the ‘maintain patent’ functionality of the online case management facility.

8. IPONZ will not disregard the disclosure without investigating the evidence supplied with the request.

Circumstances for disregarding disclosure outlined in the act

Disclosure obtained unlawfully or by breach of confidence section 9(1)(a) and (b)

9. If information about the invention was obtained unlawfully or through a breach of confidence and then made available to the public then the disclosure may be disregarded.

10. The disclosure must have been made by any persons specified in section 9(1)(a)(i)-(v) or section 9(1)(b) in the year before the filing date of the application.

Disclosure to a government department section 9(1)(c)

11. If disclosure of the invention has been made to a government department or to a person who represents the Government for the purpose of investigating the merits of the invention then this disclosure may be disregarded.

12. There is no time limit set between disclosure to a government department or to a person who represents the Government and filing of the patent application.

Disclosure at a specified exhibition section 9(1)(d)

13. If disclosure of the invention is made in association with a specified exhibition it may be disregarded. This includes disclosure resulting from the exhibition, for example media items or journal publications.

14. The disclosure of the invention associated with the specified exhibition must have been made during the 6 months prior to the filing date of the application.

15. A “specified exhibition” means an exhibition (whether held in New Zealand or elsewhere) that is declared to be an international or industrial exhibition by the Commissioner in a notice that is publicly notified. Specified exhibitions may also be online exhibitions.

16. To have an exhibition declared by the Commissioner a request should be made by the person(s) responsible for the exhibition. The request must include the dates on which the exhibition is to be held and the name and location of the exhibition. More details on the exhibition notification process can be found on the Notification of an industrial or international exhibition page.

Disclosure for reasonable trial section 9(1)(e)

17. If disclosure was due to being ‘reasonably necessary’ to trial the invention in public, then such disclosure may be disregarded.

18. The disclosure of the invention associated with a public trial must have been made during the year prior to the filing date of the application.

19. "Reasonably necessary" to work the invention in public will be evaluated based on the nature of the invention and the circumstances/reasons it was required to be trialled in public prior to filing a patent application.

20. For example, in A.H.I. Whimpway Limited v Kawakawa Engineering Limited [1982] NZIPOPAT 12 (6 December 1982), the Assistant Commissioner of patents found in favour of the applicant that the use of a gang mower on a public golf course before the patent filing date was reasonably necessary to trial the invention during the period of its development.

21. The Assistant Commissioner stated:

“A mower must of necessity be used in an open area containing grass suitable for mowing by that type of mower. In the case of a gang mower, a large area is required. Therefore, the number of suitable and available sites is relatively limited. It seems to me that it was reasonably necessary, having regard to the nature of the invention, that the experimental working was in public at the Waitangi Golf Club.”

Disclosure during a 1 year ‘grace’ period by certain persons - section 9(1)(f)

22. If a person discloses an invention in any way in the year prior to filing a patent application, then such disclosures may be still disregarded. Examples of such disclosures include:

• A print publication.
• Demonstration.
• Use of the invention.
• Sale of a product.
• Disclosure anywhere on the internet.

23. This disclosure must have been made in the year prior to filing a patent application, as defined in section 103, to be disregarded. This is known as the ‘1 year grace period’.

24. “Person” in the context of section 9(1)(f) is any one of the following:

• the patentee or nominated person.
• a person from whom the patentee or nominated person derives title.
• a person with the consent of the patentee or nominated person.
• a person with the consent of any person from whom the patentee or nominated person derives title.

The grace period comes into effect 30 December 2018

25. The 1 year grace period only applies to disclosures that occurred on or after 30 December 2018.

26. Any disclosure of the invention by any person listed in section 9(1)(f) before this date cannot be disregarded.

Examining disclosure related to ‘the grace period’

27. Where the examiner identifies a relevant document that may be subject to the grace period this will be brought to the applicant’s attention. This may arise, when the author of the prior art disclosure is the inventor or nominated person mentioned in the patent application.

The grace period in New Zealand and other jurisdictions

28. The grace period provision set out in section 9(1)(f) applies only to patent applications filed in New Zealand. The conditions under which an applicant may rely on a grace period may be different when making a patent application in other jurisdictions.

29. For example, the European Patent Convention does not include a grace period provision. Countries such as the United States and Australia do. But the conditions may be different from those set out in section 9(1)(f).

30. Inventors who may wish to obtain patents for their inventions in other countries should obtain advice/information about the relevant grace period provisions in those countries before disclosing their invention to the public.