There are a number of ways to start the patenting process, each has its own pros and cons. You may have heard that recently the United States amended its patent law, changing from a 'first-to-invent' system to a 'first-to-file' system.

The new law, known as the America Invents Act (AIA), came into force on 16 March 2013.

Filing a Patent Application in the Post America Invents Act (AIA) Era

Recent changes in United States law under the America Invents Act (AIA) mean that New Zealand applicants no longer need to file their provisional patent applications in the US to get the earliest possible prior art date against a potentially competing US application. So, are there still any good reasons for New Zealand or Australian applicants to file provisional patent applications anywhere but in New Zealand or Australia?  In most cases the answer is likely to be no.

Where to file

The first application for protection of an invention in a convention country sets the earliest possible priority date for that application.  Frequently the first patent application filed is a provisional patent application, but not always.  The table below highlights some of the potential advantages and disadvantages of filing a first patent application in any or all of New Zealand, Australia, and the US.

Click here to view table.

Given that the requirements for filing a first patent application in each country/region are substantially similar, we suggest that patent applicants consider the following information when deciding where to file a first patent application.

New Zealand

If the initial filing cost is an issue, filing directly into New Zealand is a good option. The cost to file either a provisional or complete application in New Zealand is comparatively low and there are no losses related to currency conversion issues. Filing directly in New Zealand may also be a good option if the main market of interest is New Zealand. Because a complete application filed in New Zealand can be converted to a provisional application at any time before acceptance, one option is to file a complete application in New Zealand the first instance. IPONZ will examine the complete application within several weeks of filing, potentially providing a rapid indication of the patentability of the claimed subject matter far in advance of other patent offices. Depending on the results of the examination, prosecution of the complete application can be continued, or the application can be converted to a provisional application to ensure it is never published.

An issue to be aware of if filing directly in New Zealand is the publication of the title and filing date of the application by the Intellectual Property Office New Zealand (IPONZ). Even though a generic title can be used, publication of the title and owner information may alert a potential competitor.

Australia

If the applicant wants an early indication of how a national patent office will view their patent application, one option is to file a first application as a provisional application in Australia. An international type patentability search of the application can then be requested. IP Australia will search to identify prior art relevant to the novelty and/or obviousness of the disclosed invention. For provisional applications, IP Australia will search based on the statements of the invention. No claims are required. The results of the IP Australia search can help the applicant identify possible prior art early in the application process. This can be important information when making subsequent decisions about whether to file a PCT or national application.

United States

Under the old US law it was beneficial to file a first application directly in the US1 because, otherwise, your later filed PCT or US standard application could only be cited as prior art against a competing US application based on your PCT filing date or your US application filing date, not any earlier New Zealand or Australian priority date you might have. That led to situations where a competitor with a later US priority date than your earlier New Zealand or Australian priority date could also get a US patent for a similar or the same invention. For US applications filed after 16 March 2013, this US specific benefit no longer exists.

From 16 March 2013, US patents and published US applications (including PCT applications designating the U.S.) are citable as prior art based on their foreign priority dates2. For a New Zealand or Australian applicant this means that filing a first application in New Zealand or Australia (or in any other country and in any other language) after 16 March 2013 will give a corresponding US application the earliest priority date against a competing US application.

Despite the US law changes there may still be commercial reasons to file a US provisional application. For example, filing a provisional application in the US may be required by a commercial partner. In addition, some US investors and potential licensees may view the filing of a US provisional application as indicating that the applicant is serious about pursuing the application in the US market.

Official fees for filing a provisional patent application in the US are not substantially higher than for filing in either New Zealand or Australia. However, the overall cost is higher because of US agent fees. In addition, to file in the US, New Zealand applicants require a Foreign Filing License from IPONZ.

Conclusion

In the post AIA era, the key reason for filing a first application as a US provisional application has been removed. For New Zealand applicants, it seems likely that the standard option for filing a first application will be to file a New Zealand provisional patent application. However, some decisions about where to file a first patent application may still depend on secondary factors such as initial cost, search requirements, markets of interest and investor requirements/opportunities. We are happy to discuss the factors influencing country selection with you.