Self-filing patents can cause missed opportunities

Blazing own trail by self-filing patents can cause missed opportunities

By Craig Tolson

A review of the numbers of local patent filings made in New Zealand and who was making those applications revealed the rather startling statistic that a large proportion of local patent filings were not made through specialist IP firms, instead they appeared to be self filed.

To any professional working in the Intellectual Property field this is a frightening statistic, and not just from the perspective of their own business. It is easy to see why someone might make the decision to self-file. Engaging a patent attorney is perceived as an expensive undertaking, especially for what is likely to be an unknown and unproven product or process.

However, the value that a patent attorney adds is the knowledge of the mistakes that have in the past destroyed the rights of prospective patentees as well as an intimate knowledge of the requirements for preparing robust applications that are tailored to provide the broadest monopoly that can reasonably be afforded to the applicant.

Obtaining a valid patent is not intended to be easy. The rights afforded by a granted patent can be an extremely valuable right if used to their full extent. For this reason the patent office will challenge applicants to prove their entitlement to what they are claiming.

This task can be likened to scaling a mountain. You can use the help of a guide who can navigate you around most obstacles and therefore provide you with the greatest chance of success; you could rely on the experience and the accounts of other non-experts and hope for the best; or you can blaze your own trail – and probably fall into every crevasse along the way.

There are significant shortcomings that we see all the time when ‘rescuing’ self-filed applications. The most common issues are excessively narrow claims, a lack of fair basis, the missing of important deadlines and use of the wrong form of intellectual property protection for a particular product or process.

For example, recently a very excited client called us about their product which was starting to make traction in the market and was selling strongly. The client had self-filed a design registration, protecting the look of their product. We looked into the product and confirmed that there were no patentable features and he had chosen the right form of protection.

He then advised that he wanted to engage us to file corresponding design registration in the countries where he wanted to sell his product, and that’s where the trouble started.

The client forwarded us the details of his registered New Zealand Design that had been filed around 14 months earlier, and confirmed that he had published drawings of his product online almost immediately after filing his application.

Unfortunately we had to advise him that convention applications needed to be filed within six months of his New Zealand application in order for them to be afforded the same filing date, and that because he’d published the drawings online he lost novelty in his product and unfortunately any subsequent design registration would be invalid.

Not surprisingly, upset does not justify how this news was taken.

The moral of the story is speak to a patent attorney before you make the decision to self-file. If the cost of engaging a patent attorney is too great then it may be better to sit on your idea until the cost is affordable.

As a final comment on self-filing, if your intention is to sell rights to your new product or process, you can bet that any potential licensee or purchaser will undertake a due diligence analysis of your IP. If they find it wanting, such as having narrow claims or a lack of fair basis, they are unlikely to pay what you want.

This article was written by Craig Tolson, Technical Advisor, James & Wells. Based in our Christchurch Office, Craig has a background in electrical engineering and specialises in the prosecution of electrical, mechanical and software patents.

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