Timber treatment patent faces the chop due to insufficient disclosure
The recent decision of the Assistant Commissioner of Patents in Koppers Arch Wood Protection (Aust) Pty Ltd v Osmose New Zealand & TimTech Chemicals Ltd [2012] NZIPOPAT 1 (9 January 2012) is a rare example of a New Zealand patent application being refused on the ground of insufficient disclosure of the invention.
A patent application must disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention without any undue experimentation. Sufficiency of disclosure is not considered by the Intellectual Property Office of New Zealand during examination of a patent application. However, insufficient disclosure of the invention is a ground upon which the grant of a patent application can be opposed by a third party before the Assistant Commissioner of Patents, as well as a ground upon which a granted patent can be revoked in proceedings before the High Court.
Background
Australian company Koppers Arch Wood Protection (Aust) Pty Ltd (“Koppers”) applied for a New Zealand patent relating to a material and method for the treatment of timber. The patent application was examined and accepted by the Commissioner of Patents and was subsequently opposed at a pre-grant opposition hearing before the Assistant Commissioner of Patents by two New Zealand based companies, Osmose New Zealand (“Osmose”) and TimTech Chemicals Ltd (“TimTech”).
As well as the ground of insufficient disclosure of the invention, Osmose and TimTech also opposed the grant of Koppers’ patent application on the grounds that the claimed invention lacked novelty, and was obvious, in light of alleged publication and use of the invention in New Zealand, and on the ground that the subject matter claimed by the specification was not a patentable invention.
Decision
The Assistant Commissioner held that Osmose and TimTech successfully made out the ground of insufficient disclosure, but dismissed each of the other grounds of opposition. Regarding insufficiency, the Assistant Commissioner considered that a number of terms in the claims were not defined sufficiently in the complete specification. The Assistant Commissioner referred to six specific terms in the claims as being insufficiently defined in the specification, namely, “non-water based”, “non-solvent based”, “solvent”, “heating oil”, “drying oil” and “extender”.
The Assistant Commissioner agreed with the expert witness giving evidence on behalf of the opponents that the disputed terms were ambiguous in light of the specification. For instance, although the claimed material was specified to be “non-water based” the expert witness noted that the specification included an example of a composition which contained up to 30% water.
Result
The Assistant Commissioner held that Koppers’ patent application failed the legal test for sufficiency of disclosure, namely, could a person skilled in the art “produce something within each claim by following the directions of the specification without any new inventions or additions of their own and without prolonged study of matters which present some initial difficulty?”
Koppers have been given two months to propose amendments to their specification in order to overcome the Assistant Commissioner’s finding of insufficiency. Osmose and TimTech will then be given an opportunity to comment on any amendments proposed by Koppers before the matter is determined by the Assistant Commissioner.
Adrian Evans - February 2012
