Inventions - where do I start?

The development of new inventions can provide inventors with a variety of opportunities. An important tool for exploiting these opportunities is the protection of the Intellectual Property that has been created. While, in itself, not a guarantee to success, the establishment of an appropriate portfolio can facilitate the marketing and exploitation of innovation, as well as opening additional opportunities that may not have otherwise existed.

Giving serious consideration to creating an IP portfolio is strongly recommended. This should be done at the earliest opportunity (to meet stringent filing deadlines), and in consultation with an IP specialist to ensure that your portfolio meets both your current and future needs.

Procedures

The following guidelines merely represent the steps which may be followed in the establishment of an IP portfolio for a new invention. Individual cases can differ, being ideally customised to the needs and direction of the business.

Step 1 – Know the Field

Searching is a recommended first step. There are two main reasons for searching – i) to assess whether your invention is new and novel, and ii) to assess whether its exploitation will infringe an existing patent.
Searching can be a difficult beast. Assessing whether something is truly new is difficult as the ideal search would search every published book, catalogue, magazine, patent specification, and newspaper, and preferably in every country. This is clearly an impossible task with today’s technology and thus most initial searches are an assessment of readily accessible patent specifications, internet searching (with well known search engines), and occasionally also on-line literature searching through University libraries. While a professional searcher may be engaged, many clients prefer to conduct their own preliminary reviews of patent information, and internet searching, before proceeding further. If the outcome is favourable, a more comprehensive search by professional searchers may be warranted. There are many different strategies for searching, and these are best tailored to your needs in consultation with your IP attorney.
[For those wishing to conduct their own preliminary patent searches, there is a page of the best Patent Offices providing searching facilities on the links page of our website – www.iprima.biz ]

Step 2 – Protect before disclosure

If searching is indicative that the invention may be further exploited, the next typical step is to determine which forms of IP protection are most appropriate. Of the registrable forms of protection, the most common and appropriate forms are patents and registered designs. Of these two, patents are the broadest and best able to protect function or a novel underlying concept. Registered designs are directed to shape and appearance, rather than function, though often complement patents. Again, these choices should be assessed on an individual basis.

It is important for both patents and designs that applications be filed before there is any public use, disclosure, or sale of the invention. This emphasises the importance of contacting your IP attorney at an early stage so necessary work can be completed.

For New Zealand businesses, applications are generally first filed in New Zealand with a provisional specification. This may describe the invention in general terms, taking into account anticipated developments within the next 12 months. Filing in NZ also creates a priority in most other countries of the world, enabling subsequently filed overseas applications (within certain deadlines) to be entitled to the NZ filing date. This removes the need to file in every country of choice at the outset.

Within 12 months it is necessary to complete the NZ application. This involves preparation of a complete specification which more specifically defines the invention, describes the best known method of putting the invention into practice, and includes a set of patent claims defining the scope of protection sought.

For applicants wishing overseas protection, two options exist at the 12 month (from original NZ filing) deadline. This is to file directly overseas, and claim your NZ filing date. The more popular option is to proceed through the intermediate step of a PCT application, which provides an international search and examination report as part of its process. More importantly, it extends the deadline for filing overseas by up to a further 18 months (sometimes 19 months), giving a total of 30-31 months from the original NZ filing to make a commercial decision about which countries you require patent protection.

Once individual national phase applications have been filed in each country, they will be examined and any matters raised by an examiner will need to be addressed. The most common criteria upon which examination is based is whether the invention is novel, and whether it is obvious. When any objections have been successfully addressed then a granted patent will normally issue, though may be subject to the provision that aggrieved parties with legitimate (and specified) grounds of objection may oppose the grant of a patent.

Step 3 – Investigate other aspects of IP

A complete commercial solution to the exploitation of a new invention will take into account factors such as marketing, possible licensing, and business structure. As your IP attorney we will also discuss how forms of IP, such as registered Trade Marks, can help the commercialisation process. Licensing is also an option, and we can also advise and arrange suitable agreements for you.

Other Considerations

Currently the NZ government is relatively proactive, through agencies such as the BizInfo network, and NZTE (Trade & Enterprise), at both assisting new businesses become established and entering into export markets. Grants may be available, and it is recommended that you contact these organisations

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