International filing strategies should take into account not
only what to file for and in which countries – but also
where the first application should be filed.
The following discussion focuses on choosing whether to file a
patent application in New Zealand or the United States first, but a
number of the principles can also apply to other types of
intellectual property and other countries.
Sometimes it is possible for a New Zealand individual or company
to file their first patent application for a particular invention
in a country other than New Zealand. However, there is a legal
requirement to obtain a foreign filing license from IPONZ (the New
Zealand Patent Office) beforehand.
Filing first into the United States can provide some advantages
if any of the following situations arise:
there is some relevant prior art published before the filing
date that the applicant wishes have eliminated from the USPTO's
consideration as a consequence US patent novelty requirements and;
The applicant is concerned about interference proceedings (that
is there is a risk of the applicant not being considered as the
first inventor). Statistically those that are first to file in the
United States seem to have the upper edge; or
The applicant is entering into negotiations with another party
who wishes to have the comfort of having filed a US patent
For other commercial reasons the client wishes to accelerate
progress of the US patent application; and
However, the applicant should not file first in the United
States if there is any likelihood of the applicant needing to
post-date its filing date (for example to fully exemplify the
invention). While it is possible to post-date a New Zealand patent
application, the United States does not recognise this ability to
shift a priority date.
The applicant also needs to have the budget to meet the
additional costs of filing in the United States first, as United
States patent attorneys are generally more expensive than their
If an applicant does take the route of filing in the United
States, then they need to inform their primary IP advisor of the
reasons because this could affect filing strategies in other
We recommend to clients that if they wish to file a US patent
application, they also file a New Zealand patent application on the
same date (not day – remember the date-line) or
preferably a day earlier.
This enables them to have the option of using the New Zealand
application as their priority application. This is a cost effective
exercise to obtain priority documents for future applications in
In New Zealand we are lucky in that we can file PCT applications
through Australia which, unlike EU and the US Patent Offices, can
examine applications in sufficient time to effectively place the
application in 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
A positive PCT examination report can provide a client with
confidence (or otherwise) in deciding whether to file National
If a client is only wanting patent protection in the United
States, then it may be preferable to have a US patent attorney
draft the specification. However, if a client wants 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 (and subsequent patent
prosecution) is focused on gaining patent protection in many
US attorneys on the other hand tend naturally to be US-centric
and the claims often have too much specificity with respect to the
integers for some jurisdictions. This can lead to a narrower claim
set than is required to get a strong valid patent in some countries
– making it easier to get around the patent in those
The up-shot is that there are a number of considerations in
choosing where and when and what to file for in terms of IP
protection. Clients should discuss their business strategies with
their IP advisor so that the IP strategies are well aligned.
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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