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; or
- 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 application; or
- 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 Australasian counterparts.
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 countries.
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 other countries.
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 charter.
A positive PCT examination report can provide a client with confidence (or otherwise) in deciding whether to file National Phase applications.
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 overseas jurisdictions.
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 countries.
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.