Some of the most simple inventions turn out to be the most revolutionary

IP is about creating new technologies for a better future

New discoveries deserve the best IP protection & strategy for exploitation

Distinctive brands and logos are beacons for business success

Protect your clever innovations before you tell the world

Technological advancement emerges from innovative thinking about how the pieces fit together

Solving a problem
can be a catalyst for creating new IP

Patent Protection

Inventors and IP investors should be rewarded for developing new and creative technologies and innovations in science and industry, and especially from R&D, ingenuity, effort and creativity. Protecting your creative design efforts and inventive concepts with patent rights makes good sense. If commercialisation of your valuable innovations is required, we can work alongside you with a tailored IP strategy to build your IP portfolio.

A patent protects new inventions embodied in new ideas and creative innovations. Patent protection offers exclusive rights to exploit an invention for a limited period of time, usually 20 years. A patent grants the exclusive right to commercialise the invention in the country that the patent is issued. This IP right can allow a patentee to stop others from importing and exporting, manufacturing, or selling the patented product or applying the innovative process, in the country of the patent unless a license, consent or permission in some form is provided by the Patentee or Owner of patent rights.

 

Patentable inventions include leading edge technologies, and improvements and modifications of existing devices, products, systems or processes. The various fields of technology for patentable new products and processes are broad, and not exhaustive, and include engineering and science fields, with innovative emerging technologies arising from IT, ICT, computer software, telecoms and the internet, computers and controller systems, building science and architecture, aviation, manufacturing with machines, processes, chemical engineering, biotechnology, nutraceuticals.

 

The fields of endeavour and enterprise from which inventions and innovations emerge are endless, and the types of inventions that can be protected are limitless, and essentially driven by the creative imagination of inventors and innovators. We understand the development of innovation capacities in different industries is key to the growth and success of businesses and economies.

 

We are experts at IP law and specialists in this exciting area of human enterprise. We can assist you by looking at the merits of any invention and advising on options with protecting your invention and devising an IP strategy for you and your business.

 

IP Searches

Searching patent registers is recommended before committing resources to protect your valuable IP, or for any business importing products into New Zealand or Australia.

 

The primary reason for conducting a search is to ensure that manufacturing or marketing a product will not infringe any current patents in markets of interest.   A further reason for a patent search is to provide an indication of whether your invention is patentable.  That is, to assess whether the invention or any aspect of it can be considered new and inventive in light of patent search results and prior art.  An international patent search may result in obtaining information on similar subject matter that can determine the extent of monopoly protection available in the invention.   These searches can be useful with assessing whether you are free to market your invention, known as a Freedom to Operate infringement search.

 

A patent search should extend to all valued overseas markets you are considering exporting products.  Although searches provide an indication of patentability, they are not definitive and are subject to certain inherent limitations.   Searches do not cover unpublished patent applications and the accuracy of a search is dependent on the accuracy of database records.  Also, some inventions are merely in use but not the subject of patents.  Nevertheless, we recommend that a IP clearance search in some form is conducted before a patent application is filed.

 

Searches can also be used to determine the state of the art, and monitor new technologies being developed and protected by competitors.  A business may find it useful to evaluate new technological developments by competitors.  State of the art searches can also be useful to identify potential competitors or licensees.  For example, car manufacturers and telecommunications companies commonly review patents obtained by competitors to keep abreast of the R&D being conducted in that industry.

 

Patent Filing

If you have an idea or innovation you wish to protect with a patent, you may find it useful to consider the following steps involved with obtaining a patent in New Zealand or Australia.  Similar steps are involved with patent applications in most countries.  

 

A patent application is usually filed with a provisional specification.  A provisional specification is a document broadly describing the invention, and usually includes drawings, flow charts or chemical formulae where appropriate.  Although this document does not contain patent claims, it must describe all aspects and features of the invention that an inventor wishes to protect. 

 

As the statutory requirements for a provisional specification are not as strict as for a complete specification, it is an opportunity to apply a broad-brush approach with describing the invention.  Although the invention should be described fully and in a non-limiting way, the document can describe and cover any improvements and modifications envisaged by the inventor.  In this respect, broader coverage of the invention is possible, and the need to file a further application covering any minor improvements and modifications may be avoided.  This approach makes good sense, and we can assist you with fully and properly covering your invention as it develops from prototype to commercial model, whether mass produced or customised in chosen markets.

 

The provisional specification establishes a "priority date" for the invention as described.  This date is important as it defines the date at which novelty in the invention is assessed.  For example, if another patent application for the same invention has a "priority date" after the date of filing your application, you will have first claim to rights in the invention.

 

The content of the provisional specification is confidential between the Intellectual Property Office and the applicant.  Only the title, inventor and applicant details, and the date of filing are on public record and searchable.  It is only when the application is accepted and published will details of the invention be available to the public.

 

After the provisional specification is filed with a patent application, the invention can be marketed and published without compromising any patent rights.  However, these rights only extend to covering the invention, and any variants as described in the patent specification, and if any features are not described, they may well not be protected as patent rights are limited to the invention as described. 

 

The provisional specification is a complex document that serves a definite purpose, and should only be drafted and filed by a registered Patent Attorney.  If you are uncertain whether your invention is properly and fully covered,  we can be contacted for assistance.       

 

Should any significant alterations or modifications be made to the invention it may be necessary to file a supplementary patent application to cover the modifications made to ensure your invention is adequately protected.  We can advise you whether further protection or action is required.  

 

Complete Specification

When a patent application has been filed with a provisional specification, a complete specification should be filed within twelve months to retain the priority date.  It is noted that once the complete specification is filed no new subject matter can be added to the description of the invention.  Therefore it is important to prepare and file a full description of the invention reflecting the patent protection being sought.

 

A complete specification is a more precise and comprehensive description of the invention and includes a set of claims defining the scope of protection sought for the invention.  The monopoly granted by the patent will be determined by the wording of the claims.  Therefore the wording must fully describe all patentable aspects of the invention.

 

Unless a complete specification is filed, the patent application will become abandoned and will have no further effect.  If the time for filing the complete specification arrives and the applicant is not ready to take the invention further, in most cases further options exist.  We can advise on options available provided action is taken without delay.

 

In some instances it may be acceptable to file a complete specification in the first instance rather than a provisional specification.  It can be more cost effective to bypass the need to file a provisional specification.  Factors such as the degree of development work completed on the invention, market research and feasibility studies all contribute to the decision as to whether an invention can be first covered by a complete specification.

 

Examination

After the complete specification is filed, the application will be examined.  An examiner will review the documents in the application, and conduct a patent search to establish whether or not the invention is new or inventive.  The search will cover "prior art" including published patent specifications and can include published technical documents in the field of the invention.   

 

If the examiner finds any documents that relate closely to the invention or wishes to raise an objection against the application, an examination report will issue giving an opportunity to respond to the objections.  As we prepare and file applications on behalf of clients we generally review the examiner's concerns and advise how to overcome the objections. 

 

In some instances the main objection is with the scope of patent protection sought, and the solution is to restrict the claims to ensure what is claimed is considered new over patent documents found by an examiner.  If a patent search is conducted before filing it may well be that there will be no objection of this nature.  However, given the huge number of published patent specifications available in New Zealand from many overseas countries there is always a risk that an examiner will find a document relating to a product or process that is in the same field of technology as the invention being claimed.

 

Acceptance and Opposition

Once the examiner's objections are overcome, the application will be accepted and a summary of the invention will be published in the official Intellectual Property Office journal.  Publication of your complete specification serves the purpose of giving notice of the patent monopoly being sought and providing any party who objects to the grant of a patent for the invention to oppose the grant of a patent.   A three month deadline is given to take action, extendable by a further month, if required.

 

A further significant effect of publication of the invention is that damages awarded in a successful patent infringement action can be ordered from the date of publication.  If there is no opposition filed, or the opposition is found to be unsuccessful or is withdrawn, the patent will be sealed and a Deed issued. 

 

The patent will remain in force for a period of 20 years provided renewal fees are paid at the 4th, 7th, 10th and 13th years of the date of the patent.  The filing of a complete specification marks the date of the patent.

 

Protection Internationally

A New Zealand patent covers New Zealand only.  If the invention is to be protected outside New Zealand, generally separate patents must be applied for in each country where a market exists for the invention. 

 

There are a number of options available for protecting an invention overseas.  With all the options available, it does not include applying for one patent covering all countries, as a world patent does not exist.  However, a regional or international patent application does exist, and we can advise on the advantages and disadvantages of various options.

 

In summary, applying for patent protection overseas involves filing patent applications directly in the countries of interest within the 12 month period allowed by an International Convention and/or to file in any of the four regional patenting systems in place covering areas such as Central Europe, Eastern Europe and two different groupings of African states.    An alternative option is to file a PCT international patent application.

 

PCT Applications

This option has been popular with New Zealand businesses since New Zealand became a member of the Patent Cooperation Treaty (PCT) in 1992.  This membership has enabled many New Zealand businesses to pursue patents in New Zealand and overseas via this treaty because of the many advantages it offers.

 

The PCT international application is a single patent application.  A major advantage is that a PCT application can cover over 145 countries, including New Zealand.  This means a New Zealand application need not be completed separately, but rather may be included in the PCT application.  It is important to note that although an applicant may select or designate all member countries, there is no requirement to file in any of those countries selected when the time is due.  An advantage with this process is that an applicant does not need to decide which countries to pursue patents until near the end of the application process.

 

The time to file a PCT application is generally within 12 months of the first provisional patent application being filed.  The PCT international application is accompanied by a complete specification, which includes a detailed description of the invention, any drawings, and claims defining the scope of monopoly in the invention sought. 

 

PCT Procedure

The process this application undergoes is in accordance with strict time tabling, and the stages of the application are as follows.

 

At about 16 months an international patent search and Written Opinion is automatically conducted and a report issued by the chosen PCT searching and examining authority.  The purpose of the search is to establish whether there are any published patent specifications that describe inventions of a similar subject matter effecting the patent rights sought.  The applicant is given an opportunity to amend the claims in view of the search report.

 

At 18 months the PCT application is published internationally.  Details of the invention as described in the specification will be available for any person worldwide to read and consider.

 

Applicants can then choose to request examination of their application.  Examination is requested so that the patentability of the invention as claimed can be assessed, and amendments to the claims can be filed.  An examiner will then report on the patentability of the invention as claimed.  The report is not binding and is only indicative of the strength of the patent application.  One benefit of a favourable examination report is that examiners in the respective Patent Offices where applications are eventually filed will consider the merits of the examination report and may be persuaded by such a report.

 

There is no requirement to respond to either the Written Opinion (WO) or the International Preliminary Examination Report (IPER).

 

By the 30 month deadline, or such further time that may be available for some countries, an applicant must choose which countries to enter national phase.  As the cost of entering national phase varies greatly between countries, please contact us to get an estimate of the costs involved.  As mentioned earlier, an applicant is free to choose which countries to enter national phase, and the decision can be left until a few months prior to the deadline.

 

After national phase applications are filed, examination by the respective Patent Offices will occur automatically, or in some countries after a request for examination is made.

 

PCT Advantages:

  • The cost of patent filings can be delayed by a further 18 months beyond the 12 months otherwise allowed.
  • More time is available to investigate the commercial potential of an invention, and further time needed for research and development.
  • There is a comprehensive search of international patents conducted, the results of which are available about six months after filing the PCT application.
  • The PCT application can be filed in English and translation costs deferred for non-English speaking countries until national phase entries are due.
  • While the PCT application can cover all 147+ member countries, the applicant is still free to pursue patents in only one or more of the selected member countries at the end of the process.
  • The patentability of an invention can be tested in a single patent application and suitable amendments made before patent applications in each country are examined by respective Patent Offices. This should result in significant savings as only one application relevant to all countries needs to be examined, and any amendments made.

PCT Disadvantages:

  • Official fees payable for filing a PCT application are relatively high and it may only be cost effective to use the PCT process when more than 4 or more countries are selected. If only 2 or 3 overseas countries must be protected, it could be more cost effective to file directly in these countries.
  • It delays the issuance of a patent as national applications still have to be filed at the end of the international PCT process.
  • If there is a problem with the PCT application, all may be lost as an "all eggs in one basket" risk exists, especially when publication of the patent specification occurs at 18 months.
  • The PCT system is administratively complicated and bureaucratic so that PCT applications require careful management and this feature may add to the expense.


Filing Directly Overseas

The filing of a patent application in New Zealand may give an applicant a right of priority over other applicants in other countries by operation of an international treaty convention.

 

In most of these countries the invention must not be publicly used or otherwise disclosed anywhere in the world before a patent application is filed. This is what is known as a requirement for "absolute novelty".  Absolute novelty would, on the face of it, appear unreasonable before filing patent applications overseas because a New Zealand applicant is almost certain to want to know whether the invention is commercially viable by publicly disclosing and/or displaying the invention to gauge commercial appeal. 

 

After the overseas applications have been filed they will be subjected to technical examination by respective Patent Offices.  In some countries it is necessary to file formal requests for examination (ie Canada and Australia) and in others (ie USA) examination occurs automatically.  We can provide more specific information on each country of interest to enable more accurate budgets to be established.   

 

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