PATENT STRATEGY: Where to file first?

International filing strategies take into account not only what protection to file for and in which country – but also where a first application should be filed.

The following discussion focuses on whether to file a first patent application in New Zealand or the United States, but a number of the principles can apply to other IP and countries.

Sometimes it is possible for a New Zealand company to file their first patent application in a country other than New Zealand. However, there is a legal requirement that a foreign filing license is obtained from IPONZ (the NZ patent Office) beforehand. This is something that we at James & Wells can readily achieve for you.

Filing first into the United States can provide some advantages if any of the following situations arise:

• you know some relevant prior art within the last year that you wish to have eliminated from consideration from the USPTO - or in other words US has different patent novelty requirements and you want to take advantage of them, or
• you are concerned about interference proceedings (that is not being considered to being the first inventor) and realise that statistically those that are first to file in the United States seem to have the upper edge, or
• you are entering into negotiations with another party who wish to have the comfort of a US patent application filed, or
• for other commercial reasons you wish to accelerate progress of the US patent applications, and
• you do not wish to take advantage of post dating (United States do not recognise this ability to shift a priority date).

Finally, you need to have the budget to take in the additional costs of filing in the United States first. US patent attorneys are often not the most economical in their charging.

If you do take the route of filing in the United States, then make certain that you advise your primary IP advisor of the reasons as this could affect filing strategies in other countries.

We recommend that if you wish to file a US patent application, that you also file a New Zealand patent application on the same date (not day) or preferably a day earlier.

This enables you to have the option of using the New Zealand application as your priority application. This is a cost effective exercise with regard to obtaining priority documents in light of future applications in other countries.

In New Zealand a PCT application can be filed through IP Australia, who unlike the EU and US Patent Offices, can examine your application in sufficient time to allow you to effectively knock the application to shape during the PCT process.

Conversely, the USPTO has a very large backlog with regard to inspecting PCT applications and they often fall outside the PCT charter.

A positive PCT examination report can provide you with confidence (or otherwise) in deciding whether to file National Phase applications.

If you only require patent protection in the United States, then it maybe preferable to have a US patent attorney draft the specification in the first place. However, if you would like protection in other countries (New Zealand included), then we strongly recommend that you have a New Zealand patent attorney draft the specification.

This may sound counter-intuitive. However, New Zealand attorneys generally act for clients who are exporters. Therefore, the majority of their drafting is designed around gaining patent protection in many jurisdictions.

US attorneys on the other hand tend to be US-centric and the claims often have too much specificity with respect to the integers. This leads to a much narrow claim set than it is required to get a strong valid patent in most jurisdictions - making it easier to get around the patent.

There are a number of considerations from choosing where, when and what to file for in terms of IP protection. Make sure that you discuss your business strategies with your IP advisor so that the IP strategies are well aligned.

By Kate Wilson, Partner