ALTERNATE FILING STRATEGIES?

A typical initial patent filing strategy is to file a provisional patent specification, followed by a complete specification some twelve months later.

A complete specification usually contains details of any improvements made in the twelve month period after the provisional specification was filed and includes a set of patent claims defining the most important features of the invention

The complete specification is then examined by the New Zealand Patent Office with regard to patentability.

This strategy works well for the majority of patent applicants, as it enables them to develop the invention and explore potential markets before investing in a complete specification.

However, in some instances it is preferable to file a complete specification in the first instance.

Filing a complete specification in the first instance is often recommended for clients who have a simple invention (often not requiring much further development), or for inventions on the edge of patentability (e.g. business plans, games etc).

By filing a complete specification in the first instance an examination report is received within a few weeks providing the applicant with rapid feedback regarding the potential scope of protection that they can obtain. This can give the applicant some independent reassurance as to the patentability of their invention.

It should be noted that currently in New Zealand patent examiners do not comment on inventiveness (ie whether the differences between the invention and what is known are obvious) - although this is about to change. However, they do conduct their own searching and comment on anticipation (ie whether the exact same invention is already known) and whether the invention falls within the definition of patentable subject matter.

This feedback is valuable. Firstly, by understanding the patentability of the invention, the patent applicant can strategise with their IP attorney as to whether patents are the best form of protection for the invention, or whether there should be greater emphasis placed on other areas, for example trade secrets, marketing, brand protection, design registration and so forth.

Any deficiencies in the complete specification such as lack of data will also be highlighted by the examiner's comments. This feedback can be used to help develop specific research guidelines to obtain data that can be used at a later date to augment the patent application and make it stronger.

Finally, a favourable report can give investors confidence that patent protection can be obtained for the invention.

An understandable concern in this approach is that the invention may be developed further after the complete specification has been filed and that any new features may not be covered by the application.

There are a number of steps that can be taken should this situation arise. An example of such a process is summarised below:

• A complete specification is filed in the first instance.
• At the time of filing, a request to delay acceptance of the application is made. This is typically for 15 months.
• Two to four weeks later the specification is examined. The Patent Office will give an indication as to the patentability of the invention and any deficiencies in the patent specification. Normally the applicant will have 12 months to address these.
• Near the end of the twelve months the applicant will have an idea as to the final form of the invention and whether any modifications / improvements are covered by the patent specification. At that stage the decision can be made whether to continue with the complete specification in its current form in New Zealand and/or whether to file overseas applications.
• Alternatively, the complete specification can be converted into to a provisional specification (this is easily done), and a new complete specification prepared that addresses any issues raised during examination and covers the latest version of the invention if further modifications/improvements have been made.
• The new complete specification can then be filed in New Zealand and overseas within twelve months of the original filing date.

As shown above, this is a useful technique whereby applicants can get early feedback from IPONZ as to patentability, without having to commit to filing international applications first.

As always, it is important to discuss all matters concerning an invention with an IP strategist, and to integrate such discussions / decisions into your overall business strategy. That way, maximum benefit can be taken from your specialists' knowledge of how to work the intellectual property system to your advantage.

By Kate Wilson, Partner