Patents in New Zealand: Is the Patent Office taking a more practical approach?

Several recent decisions of the Assistant Commissioner of Patents suggest that we may see a relaxation of how the Patents Act 2013 and its regulations are applied in New Zealand.

The Patents Act 2013 ushered in a sea-change in New Zealand patent law. The headline changes were to examination for global novelty and inventive step, but a raft of other changes made it significantly more difficult or expensive to obtain a patent in New Zealand. In particular changes to formalities requirements, and the strict interpretation taken by the Office to those requirements have placed significant burdens on applicants.

It is perhaps not surprising, faced with an Act which significantly raised patenting standards, that the Patent Office adopted a strict and relatively inflexible interpretation of the formalities provisions. However, several decisions from the Assistant Commissioner of Patents, on appeal from an Examiner's position, have suggested that a more practical approach should be taken.

Biocon Limited [2018] NZIPOPAT 2 and Biocon Limited [2018] NZIPOPAT 5

In this pair of cases, Assistant Commissioner Casey decided that the term "emulsifier" was not supported by the specification, but, based on the common general knowledge, "non-ionic emulsifiers" was supported.

However, the hearing was convened (as is usually the case) after the final deadline for placing the application in order for acceptance. Based on a literal reading of the Act and regulations this meant that the Applicant was not able to make the required amendment and the application should lapse, notwithstanding the fact there was subject matter the Assistant Commissioner considered allowable.

In order to avoid such an outcome, the Assistant Commissioner Casey took a practical approach to the provisions of section 230 (allowing extensions of time in exceptional circumstances) as well as regulation 156 and suspended the hearing to give the opportunity for the amendment to be considered, and then issue a final decision once the amendment had been made.

This case is also notable in its application of the law around support for the claims. In particular, although the specification as filed did not specifically utilise the term "non-ionic emulsifier", the Assistant Commissioner was prepared to accept that the person skilled in the art would have understood that this was intended and thus allow the amendment.

CNH Industrial Belgium NV [2018] NZIPOPAT 7

CNH dealt with an objection to an amendment to add the words "or at least to provide the public with a useful choice" to an object clause in the specification. Such amendments are an attempt to overcome issues with the so-called "promise doctrine" which arguably still applies in New Zealand.

The specific objection was that the provisions of regulation 58(d) had not been met. Regulation 58(d) requires a statement setting out the specific parts of the original complete specification that supports each of the proposed amendments. The Examiner's position was, in effect, that regulation 58 (d) imposed a substantive requirement and the amendment would not be considered unless the statement was provided and satisfied the Examiner. In the circumstances, because the Applicant could not point to a specific part which supported the wording "or at least to provide the public with a useful choice", the amendment could not be allowed.

Assistant Commissioner Glover, again taking a practical approach, held that Regulation 58 is not a substantive requirement, but merely a formality requirement holding:

My conclusion is therefore that the process requirements of reg 58(d) should not be read as imposing a substantive requirement that there must be specific support in the original specification for every proposed amendment. A better reading is that if the applicant relies on the amendment having support in the original specification, then reg 58(d) requires them to specify where that support is found. An applicant who fails to do so cannot expect the examiner to 'go hunting', and risks the examiner assessing the amendment on the basis that it is not supported, with the consequent delays in the time taken to bring the application in order for acceptance under s 71.

The Assistant Commissioner allowed the case to proceed to acceptance with the amended phrase, thus further implying that the addition of the wording "or at least to provide the subject with a useful choice" does not add subject matter to the specification as filed.

Primapak LLC [2019] NZIPOPAT 1

Primapak deals with an application for correction of error primarily under section 202. The Applicant's agent had made an error in withdrawing the postponement of acceptance before a divisional application had been filed. This lead to the application being accepted and the opportunity to file a divisional application being lost.

IPONZ refused to correct the error, considering that an error in judgement by the Applicant's representative does not represent an error in a document filed in connection with a patent application (or the patent application itself).

Assistant Commissioner Glover considered there was a clear error and was willing to allow the correction. Moreover, she was willing to utilise the provisions of the Act and regulations to ensure that the divisional application, which was filed at a later date, was able to be given divisional status.

Remarks

At first glance, these cases all deal with different provisions of the Act or regulations and thus stand alone. However, all of the cases dealt with a formality provision or provisions which could have been given a stringent interpretation, but a more practical, less onerous interpretation of the provision was taken by the Assistant Commissioner. The overall trend at the Assistant Commissioner level is thus to a more liberal, practical approach to the interpretation of the formalities requirements. Hopefully we will begin to see this flow through into examination and a consequent reduction of the formalities burden on Applicants in prosecuted a patent application in New Zealand.

David Nowak - March 2019

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