The Patent Filing Process
1. Optional - Initial Searching
Filing may be preceded by searching to assess novelty. This will ideally include patent, literature, and internet searching as well as accessing common knowledge in the appropriate industry.
2. Assess preliminary requirements
For New Zealand residents and citizens an application for a patent is often first filed in NZ. Filing overseas first may require permission from the Commissioner of Patents. Other countries, such as the United States, may have similar requirements for its citizens and residents. Other countries are more relaxed.
At this stage the true inventors of the invention should be identified. Also it should be ascertained if there are any legal issues affecting filing a patent application (e.g. employee or other agreements)
3. File an application with specification
The application is accompanied by a properly detailed description of the invention and its concept, allowing room for further development within the next 12 months. This is the specification, and it is extremely important that it is well drafted.
Provisional Interim protection is provided by most countries overseas for 12 months, insofar that any overseas application filed in those countries within the 12 month deadline will be effectively entitled to the NZ filing date.
Provisional route
A number of countries (e.g. UK, NZ, US) allow the applicant to first file a provisional patent specification, with the proviso that a Complete specification is filed within 12 months. The advantage here is that there is less demand on the provisional specification to precisely identify and limit the invention - a provisional specification can be a little more speculative in the direction that the invention is heading. Provisional specifications are therefore ideal for inventions still under development.
What if development of the invention takes a big step forward or sideways during the next 12 months and goes beyond the scope of the original provisional specification. You can keep the improvements secret and include them in the complete specification you have to file later, or you can file a second (or more) application with provisional specification. These can be jointly linked to the single complete specification you file within 12 months of the earliest application.
If these advantages appeal to you, and you are in a country which does not offer the option of filing provisional specifications, you may wish to consider filing in the first instance in an overseas country which allows these options. You do not always have to file first in your home country.
Complete in First Instance Route
This is an option for countries offering a provisional specification two step process, or the only choice in some countries. The difficulty here is that you have to be more specific in identifying the invention, and also include patent claims. Compared to the provisional route it is a lot less flexible, and not ideal for inventions still under development.
If you file overseas within the 12 month convention period, it is possible to file a second application at that stage containing any additional developments and improvements. If you proceed via the PCT option and re-enter your own country (sometimes an option) the original specification becomes like a de facto provisional specification. There are techniques to address filing a complete specification in the first instance, but our experience is that it is best avoided as being too limiting for the applicant.
4. Complete the Application & File Overseas
If you filed a complete specification in the first instance, and are not filing overseas then skip this step.
If you filed a provisional specification and are not filing overseas, you will still need to file a complete (after provisional) specification. This specification more clearly and precisely defines the invention and includes patent claims defining the scope of protection sought. It is the specification which is examined at the next step.
Filing overseas - by Convention
Many countries belong to a convention allowing you to file in their country 12 months after filing in another convention country. Applications filed within the 12 month period will be linked back to the original application or applications.
You must file, within the 12 month period, in each and every country where you want protection. A complete specification is lodged in each of these countries, and a translation may be required.
This can be an expensive exercise quite early in the life of an invention, and thus many applicants opt for the international PCT process. If a country of interest is not a PCT member, then you will need to file via the convention method.
Filing overseas - by PCT
Most countries are PCT members. Here a single international PCT application with complete specification is filed within the 12 month convention period. Some or all member countries can be nominated.
The application is searched and examined, and the option to make amendments in response thereto is given.
Applications must still be filed ultimately in each PCT member country of interest where protection is sought. The deadlines vary but most countries fall at either 30 or 31 months after your original application was filed (step 3). A few (in some circumstances) have an earlier deadline (around 19-21 months) and others a later deadline (up to 42 months).
The advantage of this route is that applicants have a much longer period to assess their invention and commit to filing protection in individual countries than the traditional convention route (12 months) provides. They also have the benefit of an international search and preliminary examination to help guide their decision making process.
5. Examination
The application will be examined, and objections made to claims not considered to be novel or which encompass that which is already known. Whether the subject matter is inventive (not obvious) may also be considered overseas.
6. Acceptance and Advertisement for Opposition
Once any objections have been addressed the application is accepted. In most countries other parties, having valid reasons, can oppose the grant of a patent though this is relatively rare.
The advertisement period may be the first time the contents of the patent application is published (e.g. for NZ and the USA) though many countries publish the application 18 months after the earliest filing date (typically your NZ filing date).
7. Grant of Letters Patent
At the end of the advertisement (for opposition) period, a patent will generally be granted. The maximum term is typically 20 years, subject to the payment of periodic renewal fees.
1. Optional - Initial Searching
Filing may be preceded by searching to assess novelty. This will ideally include patent, literature, and internet searching as well as accessing common knowledge in the appropriate industry.
2. Assess preliminary requirements
For New Zealand residents and citizens an application for a patent is often first filed in NZ. Filing overseas first may require permission from the Commissioner of Patents. Other countries, such as the United States, may have similar requirements for its citizens and residents. Other countries are more relaxed.
At this stage the true inventors of the invention should be identified. Also it should be ascertained if there are any legal issues affecting filing a patent application (e.g. employee or other agreements)
3. File an application with specification
The application is accompanied by a properly detailed description of the invention and its concept, allowing room for further development within the next 12 months. This is the specification, and it is extremely important that it is well drafted.
Provisional Interim protection is provided by most countries overseas for 12 months, insofar that any overseas application filed in those countries within the 12 month deadline will be effectively entitled to the NZ filing date.
Provisional route
A number of countries (e.g. UK, NZ, US) allow the applicant to first file a provisional patent specification, with the proviso that a Complete specification is filed within 12 months. The advantage here is that there is less demand on the provisional specification to precisely identify and limit the invention - a provisional specification can be a little more speculative in the direction that the invention is heading. Provisional specifications are therefore ideal for inventions still under development.
What if development of the invention takes a big step forward or sideways during the next 12 months and goes beyond the scope of the original provisional specification. You can keep the improvements secret and include them in the complete specification you have to file later, or you can file a second (or more) application with provisional specification. These can be jointly linked to the single complete specification you file within 12 months of the earliest application.
If these advantages appeal to you, and you are in a country which does not offer the option of filing provisional specifications, you may wish to consider filing in the first instance in an overseas country which allows these options. You do not always have to file first in your home country.
Complete in First Instance Route
This is an option for countries offering a provisional specification two step process, or the only choice in some countries. The difficulty here is that you have to be more specific in identifying the invention, and also include patent claims. Compared to the provisional route it is a lot less flexible, and not ideal for inventions still under development.
If you file overseas within the 12 month convention period, it is possible to file a second application at that stage containing any additional developments and improvements. If you proceed via the PCT option and re-enter your own country (sometimes an option) the original specification becomes like a de facto provisional specification. There are techniques to address filing a complete specification in the first instance, but our experience is that it is best avoided as being too limiting for the applicant.
4. Complete the Application & File Overseas
If you filed a complete specification in the first instance, and are not filing overseas then skip this step.
If you filed a provisional specification and are not filing overseas, you will still need to file a complete (after provisional) specification. This specification more clearly and precisely defines the invention and includes patent claims defining the scope of protection sought. It is the specification which is examined at the next step.
Filing overseas - by Convention
Many countries belong to a convention allowing you to file in their country 12 months after filing in another convention country. Applications filed within the 12 month period will be linked back to the original application or applications.
You must file, within the 12 month period, in each and every country where you want protection. A complete specification is lodged in each of these countries, and a translation may be required.
This can be an expensive exercise quite early in the life of an invention, and thus many applicants opt for the international PCT process. If a country of interest is not a PCT member, then you will need to file via the convention method.
Filing overseas - by PCT
Most countries are PCT members. Here a single international PCT application with complete specification is filed within the 12 month convention period. Some or all member countries can be nominated.
The application is searched and examined, and the option to make amendments in response thereto is given.
Applications must still be filed ultimately in each PCT member country of interest where protection is sought. The deadlines vary but most countries fall at either 30 or 31 months after your original application was filed (step 3). A few (in some circumstances) have an earlier deadline (around 19-21 months) and others a later deadline (up to 42 months).
The advantage of this route is that applicants have a much longer period to assess their invention and commit to filing protection in individual countries than the traditional convention route (12 months) provides. They also have the benefit of an international search and preliminary examination to help guide their decision making process.
5. Examination
The application will be examined, and objections made to claims not considered to be novel or which encompass that which is already known. Whether the subject matter is inventive (not obvious) may also be considered overseas.
6. Acceptance and Advertisement for Opposition
Once any objections have been addressed the application is accepted. In most countries other parties, having valid reasons, can oppose the grant of a patent though this is relatively rare.
The advertisement period may be the first time the contents of the patent application is published (e.g. for NZ and the USA) though many countries publish the application 18 months after the earliest filing date (typically your NZ filing date).
7. Grant of Letters Patent
At the end of the advertisement (for opposition) period, a patent will generally be granted. The maximum term is typically 20 years, subject to the payment of periodic renewal fees.