International Patent Filing Strategies: Should We File Our Patent Application First In New Zealand Or The United States?

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...