Table of Contents
Open Community Calendar >
Message from the President Rebecca M. McNeill
Read more >
Message from the Editor
Read more >
Minutes of the Annual Meeting
Read more >
Annual Symposium
Read more >
BIPLA Annual Writing Competition
Read more >
MTAS and the Common Law of Bailment
Read more >
2023 BIPLA Comment on Expanding Criteria for Admission to Practice
Read more >
2023 BIPLA Comment on Patent System Robustness and Reliability
Read more >
Members on the Move
Read more >
A Look At The Legal Intersection Of AI And Life Sciences
Read more >
Optimising prosecution strategy for patent term extensions in Europe
Read more >
What is the current threshold for support of a patent claim in New Zealand?
Read more >
The Top Ten TTAB Decisions of 2022
Read more >
List of Officers and Board of Governors
Read more >
Job Listings
Read more >
< Back
< Previous Article
Table of Contents
Next Article >
2023 Ⓒ Boston Intellectual Property Law Association

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

By David Miles, RnB IP
The Patents Act of 19531 has long been the legislative pillar for patenting in New Zealand with very few amendments over its life. As such, the enactment of the Patents Act of 20132 (with assent on September 13, 2013; hereinafter ‘the 2013 Act’), was met with anticipation and some trepidation by many New Zealand practitioners, particularly on the understanding that there were going to be wide sweeping changes.
One of those changes related to support of a patent claim in the description of the specification. The purpose of this change was to strengthen this aspect in New Zealand law. Under the 2013 Act, claims are to “be supported by matter disclosed in the complete specification” (Section 39(2)). This replaced the wording in the Patents Act of 1953 that the claims must only be ‘fairly based’ on the specification.
It became immediately clear upon applying this new legislation that the Intellectual Property Office of New Zealand (IPONZ) was taking a stricter approach compared to its application of ‘fair basis’. This was certainly expected by the practitioners in this jurisdiction.
However, unexpectedly, it became unclear, and remains so, as to where the actual bar is for meeting the requirement for support of a patent claim in the description of the specification. We note that even the IPONZ Examination Manual does not recite a test for descriptive support.
Fair Basis
Prior to the 2013 Act, claims prosecuted in New Zealand were required to be ‘fairly based’ on the specification. This was generally a low threshold in which the accepted approach to fair basis was adopted in Mond Nickel Co. Ltd’s Application [1956] RPC 18. It was based on an inquiry as to whether an invention as claimed is described in a general sense and whether there are any inconsistencies between the disclosure and what is claimed. As such, many practitioners considered that this type of objection was more of an issue of clarity than anything else.
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:
“It may I think be concluded, from the wording of [s 10] that a mere broadening of the protection claimed in a complete specification, while not departing from an invention described in clear terms … should not result in a finding that the claim is not “fairly based”…”3
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:
“It is wrong to employ "an over meticulous verbal analysis. It is wrong to seek to isolate in the body of the specification "essential integers" or "essential features" of an alleged invention and to ask whether they correspond with the essential integers of the claim in question.”4
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
As mentioned above, the new rules regarding ‘support’ came into effect with the 2013 Act, in which all claims must “be supported by matter disclosed in the complete specification” (Section 39(2)).
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.
Charles Caulder BREE ([2017] NZIPOPAT 16) ‘BREE’6
The subject matter at question is directed to foundations, and specifically, prefabricated modular buildings in which the following claim 1 was under examination.
Claim 1. A foundation supporting a building, the foundation being located on a ground surface and formed from modules, each module having: a moulded or cast internally reinforced broad rigid lower surface; a moulded or cast internally reinforced broad rigid upper surface; peripheral and internal rigid separating means that have been moulded or cast in the lower and upper surfaces; and fastening means connecting the module to another module.
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:
"…[it] is a matter of comparing the invention described in the claims and the invention described in the specification, and assessing if the former is "supported by" the latter. It is not enough that the specification merely mentions a feature appearing in the claim, rather it must be "the base that can fairly entitle the patentee to a monopoly of the width claimed." (emphasis added)
The IPONZ held that the scope of claim 1 was not supported across its width of scope by the description of the specification.
It became evident from this decision that support must at least be that the specification provides a full disclosure of the invention as defined in the claims in its full breadth of scope.
Similar to BREE above, the IPONZ took the approach in this Patent Office hearing that (1) the support requirement is more stringent than ‘fair basis’, (2) guidance can be found in considering the UK Patents Act of 1977, and (3) that support "…requires a comparison of the invention described in the claims and the invention described in the specification, and an assessment of whether the former is "supported by" the latter. The scope of the claims must not be broader than is justified by the extent of the contribution to the art, as disclosed in 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".
It is certainly an issue as to how the rules for support under New Zealand practice and law are being currently applied.
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’.
We also know that the Commissioner in the BREE hearing said that ‘I do not believe that the mere mention in the specification of features appearing in the claim will necessarily be sufficient support. The word “support” means more than that and requires the description to be the base which can fairly entitle the patentee to a monopoly of the width claimed.’ (emphasis added).
It has long been considered that strict literal / verbatim support was not required in NZ, particularly under the Patents Act of 1953. However, it has become apparent from the recent stance of the IPONZ that there is an internal agenda of being ‘tougher’ on support based on the 2013 Act and the above IPONZ decisions, perhaps beyond what was predicted.
It actually appears that not only is strict literal / verbatim support required in New Zealand for each and every feature of a claim, the support must be such that the combination of these features in the claim must be clearly taught in the specification across the full width of claim scope.
New Zealand may now be one of the most difficult jurisdictions in meeting support requirements, but time will tell.
2. 3. 4. 5.
6. 7.
8. 9.