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
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 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
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
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
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