Novelty - as it relates to Intellectual Property

Novelty is a primary requirement for valid patent or design protection. Most IP owners run into problems as a consequence of premature disclosure of their innovation and IP. A general rule is that you should contact your attorney before there is any publication of the invention, and ensure that you have been advised that applications are in place before proceeding with any disclosure.

Most of the world has absolute novelty requirements for both designs and patents. Essentially this means that an application for either form of protection must be filed prior to any disclosure of the inventive or design concept anywhere in the world. This includes not only disclosure by you, but also earlier disclosures by others who have invented or designed something identical or similar. In the case of an earlier published invention or design which is not identical to your own, you may still be able to obtain protection for remaining differences.

In contrast, New Zealand currently has local novelty. This means that only disclosures having occurred in New Zealand affect the validity of any patent or design application. While overseas publications and disclosures do not count, be aware that many foreign patent specifications, books and other publications are readily available in New Zealand, and thus form part of the local knowledge.

The United States allows a 12 month grace period (for patents) from the date of first public disclosure, with a few conditions. Several other countries also allow grace periods, with certain conditions – Australia being one recent addition to the list. Grace periods are useful where there has been inadvertent initial disclosure of an invention before the filing of an application, but should not be relied upon in the first instance. Actions regarded as disclosure include:public display or use of an invention;publication of details of the invention;commercial use of the invention, even if secret;sale or advertising for sale of the invention;disclosure or showing the invention to any party not under an obligation of confidentiality.

There are some exceptions, though may not be recognised by all countries. A talk before a learned society, or display at a recognised International exhibition are two examples.