The developmental time for inventions varies according to industry type and the organisation developing the product. This means that the timing of filing patent applications and associated strategies needs to be carefully thought out if the patentee is to gain full advantage from the patent system.
In general, industries based on the softer sciences (such as life science) take considerably more time to develop a product than those based on the harder sciences (such as electronics). One reason for this is that the testing of inventions on live subjects takes time. Particularly with agricultural and horticultural applications, data is required over a number of seasons or generations. In contrast, mechanical, electrical and software based inventions can be tested and improved rapidly – often leading to working prototypes within twelve months of initial concept.
In general commercial organisations tend to have a faster development time than pure research organisations - mainly because they tend to have more rigorous systems focused on particular markets. In contrast, research organisations tend to be more speculative. There are of course always exceptions.
Unfortunately, the twelve month patent cycle means that within a year of concept and the filing of a provisional application, there is an expectation that a complete patent specification will be prepared and filed along with international applications. Often publication of the patent specification occurs six months after this.
This timing does not suit a long development cycle. To warrant the expense and effort of filing international patent applications, you need to know if the product is likely to work, whether there is a market and the final form of the product so that you can get robust patent protection. Further, early publication can signal your intentions to competitors.
What to do?
It is possible to delay filing applications or shift filing dates of applications if a particular project is taking longer than expected to become market ready. However, this requires that publication does not occur until at least an IP position has been clearly considered. For most countries, publication cannot occur before the priority date of any patent application. Therefore publication (such as in a research paper) adversely effects the ability to juggle priority dates.
Tactics that can be adopted to match the filing of patent protection with the development cycle can include the following:
- delay filing a patent application until you have some confidence in the invention: however, if a competitor is working on something similar then there is risk the they may obtain an earlier priority date than you;
- withdrawing an early filed patent application (if you feel confident that you can lose the priority date) and refiling it;
- filing a complete specification in the first instance to get feedback from the patent office so as to get direction as to exemplification data required: this works well with the New Zealand Patent Office as it has a fast examination turn around;
- file a generic patent application for the broad concept with the risk that without specific examples it may not get granted: this can act as a deterrent until you file a more specific patent application (perhaps directed towards a selection invention) for the best embodiment of the invention;
- ensure that R&D is required to meet milestones such as provision of examples for inclusion in the patent specification: then adjust the timing of filing patent applications (or the decision as to whether to proceed with a particular application) based on whether R&D meets those milestones.
As can be seen, there are a number of options that can be undertaken to meet different development cycles. The key is to have controls in place to prevent premature publication and communicating with your IP strategist.
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.
James and Wells is the 2009 New Zealand Law Awards winner of the Intellectual Property Law Award for excellence in client service.