Do your homework before filing your first application

A company recently asked us to review their patent filing and strategy.  They had filed their own patent application in New Zealand which had been examined and, despite responding to the examiner, they were unable to overcome the objections made.

After completing our review we were hopeful that the patent could be salvaged and still provide some protection for the product in mind.  We turned the existing filing into a provisional specification and then re-completed the application using a professionally written patent specification.

Unfortunately, we were unable to recover an earlier mistake made by the company before they sought our help, which was to consent to a shift in the patent application priority date.  At the time the company thought this was a straightforward thing to do. But priority dates can be a critical issue, as this company found out to its detriment.

On responding to the revised specification, the New Zealand examiner had found just one issue with the application. A valid earlier published patent application that was filed literally a month before the new priority date agreed to by the company.  This patent forced the company to narrow its claims.
Lessons to be learnt:

• Seek professional advice at an early stage, ideally before filing a patent application.  There are many things that can go wrong.
• Be very careful about relinquishing your priority date – every time your priority shifts, there is a risk of new ‘prior art’ impacting on your IP position.

CreateIP can assist with an initial discussion about a new patent filing, performing initial checks and ensuring the best possible priority date is obtained and retained.

 

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