A typical initial patent filing strategy in countries with a
provisional patent system (such as Australia, New Zealand, the
United Kingdom and the United States) is to file a provisional
patent specification and to follow this up with a complete
specification some twelve months later.
As we advise our clients, a complete specification usually
contains details of any improvements made of the remaining twelve
month period and includes patent claims. Plus, it is the complete
specification that is examined by the prospective Patent Office
with regard to patentability.
This strategy works quite 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.
Usually we do this with clients who have a simple invention
(often not requiring much further development). Sometimes with
fairly simple products, or inventions on the edge of patentability
(e.g. business plans, games), the patentee wants some independent
reassurance as to the patentability of their invention.
The current priority of the New Zealand Patent Office (IPONZ) is
to issue an examination report within a few weeks. This way the
patent applicant receives independent feedback regarding the
potential scope of protection that they can obtain. It should be
noted that currently in New Zealand the patent examiners do not
comment on inventiveness - although this is about to change.
However, they do conduct their own searching and comment on
anticipation 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 then
stratigise 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
Any deficiencies in the complete specification such as lack of
data will most likely be highlighted by the examiner's
comments. We can use this to provide the applicant with research
guidelines to obtain data that can be used at a later date to
augment their patent application. It should be noted that quite
often we have given clients research guidelines, but they need the
prompt of an examination report to implement them.
Finally, a favourable report can give investors confidence that
IP protection can be available for the invention.
An understandable concern in this approach is that the invention
may be developed further and that the new features will not be
covered by this process.
This contingency is allowed for and a process addressing this is
We file a complete specification in the first instance.
At the time of filing, we also request that acceptance of the
application is delayed. This is typically for 15 months.
Two to four weeks later the specification is examined, and we
have the opportunity to place the application in order
Within twelve months of filing the complete specification the
client will have an indication from IPONZ as to the patentability
of the invention and any deficiencies in the patent specification
(none of course)
The client will also know near the end of the twelve months as
to the final form of their product and whether that is covered by
the patent specification.
At that stage they can decide whether to continue with the complete
specification as is for New Zealand and any overseas
Alternatively, we can convert the complete specification to a
provisional (this is easily done) and prepare a new complete
specification that addresses any IPONZ concerns and covers the
latest version of the invention.
The now complete specification (if there is one) can then be
filed in New Zealand and overseas within twelve months of the
original application date.
As you can see, this is a useful technique whereby clients can
get early feedback from IPONZ as to patentability without having to
commit to international applications first.
As always, we encourage patentees to discuss with their IP
strategist all matters concerning their invention, including
business strategy. That way, they can get the maximum benefit from
attorney's knowledge of how to work the intellectual property
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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