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 forth.
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 summarised below.
- 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 for acceptance.
- 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 applications.
- 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 systems.
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.