Most inventors realise that they shouldn't show their ideas
to too many people before they have applied for patent protection.
But it can come as a shock to learn just how easy it is to make a
mistake which will severely reduce your options for protecting that
great new idea.
A recent US patent infringement case has highlighted how careful
inventors and patent applicants must be to make sure that they do
not inadvertently destroy their chances of obtaining valid patent
protection. In the case of Hamilton Beach Brands Inc v
Sunbeam Products Inc the patentee, Hamilton Beach, sued
Sunbeam over its alleged infringement of a patent relating to a
portable slow cooker. However, during the proceedings
Hamilton Beach revealed that more than a year before filing its
patent application it had made arrangements with a supplier to have
the cookers manufactured under contract. In a critical email,
the supplier wrote to Hamilton Beach confirming that it was ready
to begin production of the cookers for Hamilton Beach on receipt of
The court held that this email was an offer by the
supplier to sell the cookers to Hamilton Beach.
Because this offer was made more than 12 months before Hamilton
Beach filed its patent application, it could not rely on the grace
period provisions in force in the US at the time, and the relevant
claims of the patent were held to be invalid.
While the exact rules around novelty differ from country to
country, if this set of circumstances occurred in New Zealand today
then the result would probably be the same, regardless of any
agreement between the parties to keep the supplier's offer
confidential. An offer by any party to sell an invention will
invalidate a patent application filed at a later date. In
fact, in New Zealand the supplier's offer would have
invalidated a New Zealand patent even if received only the day
before the patent application was filed.
It appears that this strict rule may be relaxed when New
Zealand's new Patent Act, the Patents Act 2013, comes into
force some time in the next 12 months. Under the new Act, the
novelty of an invention claimed by a patent is assessed against
"all matter (whether a product, a process, information about a
product or process, or anything else) that has at any time before
the priority date of that claim been made available to the public
(whether in New Zealand or elsewhere) by written or oral
description, by use, or in any other way". This language
mirrors the current UK Patents Act, and moves away from a strict
prohibition on "use", to dealing with use which makes
"matter...available to the public". In the UK, the
use of an invention before a patent application is filed only
destroys novelty in the patent application if it enables a suitably
qualified member of the public to reproduce the
It remains to be seen whether the courts in New Zealand will
adopt the UK interpretation of the novelty rule when the new Act
comes into force. In the meantime, the Hamilton
Beach case holds an important lesson for patent applicants in
New Zealand, particularly those who intend outsourcing manufacture
of their new product, or those who simply want to lock in a buyer
before committing to the costs associated with filing a patent
application. There is no way around it; you must file your
patent application first.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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