What is the current threshold for support of a patent claim in New Zealand?

Presiding Lloyd-Jacob J in Mond Nickel Co Ltd’s Application (1956) 73 RPC 189 formulated a three-stage test to determine whether subject matter is fairly based, namely:

1. Is the alleged invention as claimed broadly described in the specification?
2. Is there anything in the specification that is inconsistent with the alleged invention as claimed?
3. Does the claim include, as a characteristic of the invention, a feature on which the specification is wholly silent?

It is also significant to note that the phrase “broadly described” as set out in the first element of Lloyd-Jacob J’s test has since been interpreted by the court in Imperial Chemical Industries Ltd’s Application (1960) 77 RPC 223 as meaning “in a general sense”.

Subsequently, in Cool 123’s Application (Commissioner’s decision No. P11/2006, 13/3/06), Assistant Commissioner Popplewell confirmed that:

Accordingly, the accepted test for fair basis in New Zealand was to ask whether the invention as claimed is broadly, and in a general sense, described in the specification. It is also important to note that a mere broadening of the protection claimed in a complete specification, while not departing from an invention described in clear terms, would not have resulted in a finding that a claim is not fairly based. Hence, it was not necessary for a specification to provide enablement across the entire scope of a claim.

Also, with reference to the High Court of Australia in Lockwood Security Products Pty Ltd v Doric Products Pty Ltd [2004] HCA 58 (‘Lockwood’), it should be noted that the IPONZ and the New Zealand courts have long, regularly drawn upon decisions from Australian courts and IP Australia hearings (as well as Europe such as the United Kingdom ‘UK’), when applying their legislation. At paragraph 68 in Lockwood, the High Court held that:

Hence, prior to the 2013 Act, and in view of Lockwood, it was accepted that the IPONZ should not apply an overly limiting interpretation of the specification when assessing the fair basis of a claim. This was supported by the decision of the Commissioner in Astrazeneca AB [2006] NZIPOPAT 29 (31 July 2006).⁵

Although expected to be broadly similar to United Kingdom (‘UK’) standards regarding “support”, there has not been as yet, any court cases in New Zealand providing guidance as to the bar in which to meet the support requirement. In this regard, there appears to be a general understanding amongst practitioners in this jurisdiction that support can only be assessed by the person skilled in the relevant art. As such, it is anticipated that, similar to other enquiries involving the “person skilled in the art”, the issue of support should be able to be argued with evidence of what the person skilled in the art would be “reasonably expected” to make of the disclosure in the specification, and whether that disclosure is adequate for the skilled person to perform the invention over the full scope of the claims. Hence, for example, pointing an examiner to areas of support in the specification, and referring the examiner to articles, texts, reviews, etc. demonstrating what a person of skill in the art would reasonably expect and the common general knowledge in the art at the relevant time.

Thus, it seemed apparent that overcoming an allegation of lack of support would likely require the examiner to be satisfied that the skilled person would be able to perform the invention over the full scope claimed, based on the teaching in the specification, together with the common general knowledge in the art. However, it should be known that this level of understanding is merely based on experiences that practitioners have had with the IPONZ over the years, in which there is still no guidance from the courts.

There have been two IPONZ hearings which have dealt with the aspect of support. These hearings are discussed in turn below.

The examiner asserted that the specification provided two examples relating to a foundation, but that these examples did not sufficiently define the claimed foundation. The examiner considered that ‘neither of the only two examples constitute embodiments of the foundation that is claimed in the proposed claims, and there is no disclosure of combination of the features that is now claimed, then the claims are not supported by the complete specification’.

As expected, the IPONZ looked to legislation in the UK, and particularly the passages in the 1977 Patents Act⁷ that related to support. Importantly, the approach taken by the IPONZ in assessing support in this hearing was the following:

The IPONZ held that the scope of claim 1 was not supported across its width of scope by the description of the specification.

The invention as defined by claim 1 was directed to a formulation that comprised the term "an emulsifier". The examiner had issue with this term on the alleged basis that it was referenced only once, as it relates to polysorbate, and not to "emulsifiers" per se. It should be noted that the specification was replete in reciting Polysorbate 20, a specific emulsifier, but other emulsifiers within the polysorbate family were also mentioned.

The applicant submitted that the claimed invention related to a composition comprising a citrate buffer which included an emulsifier, but that any emulsifier would suffice in achieving the invention.

The IPONZ took the approach that the "… mere mention will not necessarily be sufficient to establish support. Further, the mention of one specific family of emulsifiers does not on its face provide support for a broad claim that encompasses all emulsifiers." (emphasis added)

In response, the applicant relied on the person skilled in the art and asserted that such a person would know that other emulsifiers (i.e. non-ionic emulsifiers) could be used to the achieve the claimed invention. In other words, a particular emulsifier is not necessary to define the claimed invention.

The applicant, in relying on the House of Lords in Biogen Inc v Medeva Plc [1997] RPC 1,⁹ stated that the "long established principle…[is] that the specification must enable the invention to be performed to the full extent of the monopoly claimed. If the invention discloses a principle capable of general application, the claims may be in correspondingly general terms. The patentee need not show that he has proved its application in every individual instance. On the other hand, if the claims include a number of discrete methods or products, the patentee must enable the invention to be performed in respect of each of them."

The applicant made a final submission that the claimed invention could certainly be achieved with any emulsifier. The IPONZ was not convinced in which the decision turned on the assertion that the evidence of support only related to non-ionic emulsifiers. The IPONZ considered that the term ‘emulsifier’ is unacceptable within the context, but that the specification appears to support the term "non-ionic emulsifiers" or "polysorbates".

There are no court cases in relation to support and just the two IPONZ decisions as discussed above. What we do know is that legislative changes were made years ago to raise the bar for showing support of a claimed invention in the specification, as it moved from ‘fairly based’ to ‘supported’.