Filing tips

Making the most of your New Zealand application

As an Asian, US or European Patent Attorney, Patent Agent or IP manager you are often charged with the responsibility of advising innovators where to file and how much it will cost, or to manage a Patent filing program given a set budget.

Here are a few Patent filing suggestions that you may not have previously considered but which might help to stretch or trim budgets. The suggestions can also provide significant downstream advantages many of which are outlined in the article 12 good reasons for filing a New Zealand Patent application.

Case Study 1 – a US filing option

Setting the Scene

You are a US based Agent with a well-intentioned client who has invented a natural chocolate product which has, when mixed with berry essences in precise ratios, the surprising property of burning fat. The taste is also reported to be “out of this world”. In fact, it has been found in secret trials that the more you eat, the thinner you become. Similar to a lot of start up companies your client does not have an abundance of spare cash and wants to keep control of the invention. She is confident that her invention will be a worldwide success and wishes to file in as many countries as possible.

Strategy

Nine months ago you prepared and filed a US Provisional application. You explained the PCT patent filing option to your client and the likely costs involved. As a result, she has asked you to file a PCT application before the twelve-month deadline passes. The client believes that filing of a PCT application will protect her company’s long-term revenue flow and will lead to significant future overseas partnership opportunities. Importantly, your client will by the time the application is due to be “nationalized” have sufficient capital to meet the investment required to pursue patents worldwide. pursue patents worldwide.

The New Zealand Patent office, you explain further, is unique in that it will provide a Search and Technical Examination report within five (5) business days. The Specification will be examined for novelty, clarity, inventiveness, sufficiency and breadth of claiming. You emphasize that the report resulting from that Search and Examination is completely independent and that the Examination will be conducted without any preconceptions. It may also form a tool useful in future negotiations with parties interested in obtaining licenses to make and sell her products overseas.

Your New Zealand Agent assures you that he will forward the report with any appropriate comments the moment it is received and in good time for you to revise and amend the application before filing the final PCT document.

You also advise the client that by filing an early New Zealand application she will gain three major cost saving advantages:

Firstly. By obtaining the report so early in the Patent process, unknown prior art that might be detrimental to the application in its present form can be considered and, if necessary, the application reworked, amended or even abandoned before serious expenditure has taken place. The report will almost certainly contain valuable comments that can be used to enhance the application and to reduce expenditure incurred making costly amendments in later proceedings.

Secondly. The report will be useful in that it will be read by at least two sets of eyes knowledgeable in the ways of Patents - those of the New Zealand Examiner and the New Zealand Agent. The report and Agent review can be used to enhance the application and can be used as a useful tool to iron out any anomalies, omissions or non-sequitors that may have been hidden from your eyes before completing the PCT application. The flexibility of being able to make amendments prior to the main International filing can substantially reduce downstream prosecution costs and will undoubtedly lead to a more robust Patent document. It gives voice to the old saying that “an ounce of prevention is worth a pound of cure.” Given the relatively inexpensive New Zealand Agent and official fees the ability to file early into New Zealand and receive an Examination report and Agent review is well worth considering.

Thirdly. After filing your New Zealand application the timing of Acceptance and Grant is largely controlled by the Applicant. If the Applicant wishes to gain early Patent rights, or to use them as the basis for filing in countries that waive the Technical Search and Examination requirements, the equivalent Granted New Zealand Patent is invariably the best option and, often the only one that can be used. A further consideration is that by using this filing strategy there is a substantial reduction in the Agents and Official Filing and prosecution fees. Australia (Granted Equivalent), Singapore and Malaysia are examples of countries, which allow these types of applications. The advantages to applicants using the New Zealand Application as a basis for filing into these jurisdictions are considerable and well worth exploring.
To reduce costs and to provide a degree of confidence to your client and to her creditors you have decided, with the client’s permission, to prepare a preliminary set of claims and file a Complete Specification into New Zealand some three months before filing the PCT application.

Case Study 2 – An Australasian/Asian scenario

Setting the Scene

For many years now your Australian Patent Firm has been working closely with Le Feu Rapide an elite European Professional cycling team.

Every year, Le Feu Rapide travels to Australia and uses the European off-season to test and develop a wide range of cycling accessories ranging from wheels, seats, tyres, shoes and clothes. At the moment there is great excitement in the R & D section regarding its newest invention.

The invention is to a universal helmet, which can be used on the track, on the road and in time-trialling events. The helmet is special. Not only is it aerodynamically superior to existing helmets it is also unique in that it provides a cooling effect in use. It is designed so that air entering from the front of the helmet is drawn through and over a cyclist’s head before venting out through the back via strategically sized and positioned ducts. The invention is also significant because at present separate helmets are needed for each of the three different cycling disciplines.

The new helmet is expected to revolutionize the sport and will gain the team a significant advantage in premier competitions such as the Tour de France and the US cycling tour. Success in these events also brings rich rewards in terms of future product sales.

Strategy

As manager in charge of Le Feu Rapide’s Patent portfolio you begin the all-important patenting process so that road trials may begin in earnest. You are also aware that any changes to cycling equipment for use in the following summer’s events have to be filed with the International Cycling Union no later than 31 July of the present year. Once the changes are filed the documents and designs showing any equipment changes are made available to the other teams on the professional circuit. It is imperative therefore, that Le Feu Rapide has confidence that its innovative new helmet is protected via a muscular Patent Strategy well before this date and that their monopolies rights have either been secured or are well on their way to being secured.
Le Feu Rapide uses patents primarily to block copying from competitors and as a key marketing tool in a market populated by technically aware consumers. Le Feu Rapide also has several agreements with manufacturers in Singapore, Malaysia and Thailand to produce components for the helmet once final development is completed and, it is desirable that the interests of these manufacturers are also protected.

It is imperative, particularly in the Asian environment, but increasingly more so in the European context that Full Patent rights are granted as quickly as possible so that any copying that might take place can be brought before the courts.

Given that the long delays in the EPO have previously been a source of irritation, you meet with the management team of Le Feu Rapide and agree to a strategy which entails you preparing and filing in association with your New Zealand Agent a New Zealand Completed Patent Specification with a view to gaining Patent Grant as soon as possible. You have advised Le Feu Rapide’s management that this application will ultimately be used as a priority document for filing separate applications into Europe (via the EPO), Australia, Singapore, Malaysia, Thailand, China and the USA.

You also advise that you will instruct your New Zealand Agent to aggressively pursue the New Zealand Application to ensure Grant in the shortest possible time (six months or less from filing) and you will use this application as the basis for filing separate Australian and Malaysian Applications requesting Modified Examination, a Singaporean application requesting an All Foreign Approach to Search and Examination, and as a base document for your European, USA, and Chinese applications.

This will ensure that protection in your manufacturing bases of Singapore, Malaysia and Thailand is consolidated and will provide the added benefit of enabling any anomalies discovered during the New Zealand Search and Examination procedure to be used to obtain more robust protection in the larger, European, Chinese and United States markets.

There are also considerable savings to be made in reducing Official filing fees and in prosecution costs.

Please remember that these suggestions are provided to be considered along with many possible options and should first be discussed with your New Zealand Patent Professional before any Filings are made.

Disclaimer: PIPERS endeavours to be as accurate as possible when preparing these articles and has taken all reasonable steps to ensure that the information contained herein is accurate. The accuracy of the article is limited by the accuracy of the data sources from which it is taken. The contents of this report are for purposes of information only. If the contents of this report require further consideration please seek the advice of an IP professional.
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