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Patent strategy in the IT era

Patent strategy in the IT era. Frank Callus, Principal Henry Hughes Patent Attorneys New Zealand www.henryhughes.com. Overview. Client education Free online information & search tools for clients Level of prior art searching First filings International filing strategy

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Patent strategy in the IT era

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  1. Patent strategy in the IT era Frank Callus, Principal Henry Hughes Patent Attorneys New Zealand www.henryhughes.com

  2. Overview • Client education • Free online information & search tools for clients • Level of prior art searching • First filings • International filing strategy • Other search options • Cost reduction measures

  3. Client education Information for clients – patents/designs/trade marks Clients should know what to look for – novelty destroying disclosure Client self-screening can provide cost-saving If search negative, client contacts patent attorney

  4. Free online information for clients • NZ Intellectual Property Office: www.iponz.govt.nz/cms/what-is-a-patent • IP Australia: www.ipaustralia.gov.au/get-the-right-ip/patents • UK Intellectual Property Office: www.ipo.gov.uk/patent.htm • Firm websites, e.g. Henry Hughes: www.henryhughes.com/Site/A_Beginners_Guide/Patents.aspx

  5. Free online search tools for clients Google Patents: www.google.com/patents Dog Pile (Google, Yahoo! And Bing):www.dogpile.com

  6. Case example • Client has idea for motorcycle helmet with built-in brake light • Client says he has searched for prior art but a keyword search on Google Patents reveals…

  7. Level of prior art searching • Balance between cost of search vs. cost of protection • Specialist search websites (free): WIPO:www.wipo.int USPTO:www.uspto.gov EPO:www.espacenet.com IP Australia:www.ipaustralia.gov.au

  8. First filings • What: Provisional specification (with claims) • Where: If NZ inventor, can file in NZ or other countries • When: Advantage in filing US provisional first if US market is important (e.g. biotech)

  9. Examples of NZ funding agencies • Foundation for Research, Science and Technology: www.frst.govt.nz • Grow Wellington: www.growwellington.co.nz • Movac: www.movac.co.nz

  10. International filing strategy • PCT International Application • European Patent Application • Convention application, e.g. US application

  11. Other search options • Monitoring progress of competitor’s applications: - Open websites: USPTO, EPO, Aus - Closed websites: IPONZ • Private search companies, e.g. RWS: www.rws.com Patent seekers: www.patentseekers.com • Freedom to operate, due diligence

  12. Cost reduction measures • File PCT Applications using PCT-SAFE or PCT-EASY: www.wipo.int/pct-safe/en/download • Single agent for multiple countries • Exchange rate comparison: www.xe.com/ucc • Provide local agents with electronic specification in editable form

  13. Case example Time -2 months 0 months 12 months 13 months Idea 1 Idea 2 Idea 3 Idea 4 Provisional A Provisional B Provisional C PCT Early National Phase in NZ

  14. Case example continued Time 16 months 18 months 25 months 30 months 31 months US Freedom Search ISR & Opinion NZ Examination Early national phase in US PCT Publication Grant A & B Divisional C Early national phase in EU China Australia Korea EU Divisional

  15. Frank Callus, PrincipalAdrian Evans, Senior Associate frankcallus@henryhughes.co.nz

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