Based on a recent decision by New Zealand’s Intellectual Property Office (IPONZ), patent applicants wishing to amend the specification during examination in New Zealand no longer need to provide a specific statement of support setting out the specific parts of the original specification that supports each and every proposed amendment. Rather, such a statement is only required if the applicant relies on the amendment finding support in the original specification, and is designed to assist the examiner in locating the relevant sections in the specification when assessing the proposed amendment.

Relevant law

Regulation 58 of the Patents Regulations 2014 sets out the “prescribed manner” as to how a patent applicant may amend their patent specification before acceptance under Section 40, provides:

58. Amendment of complete specification before acceptance

An amendment of a complete specification before acceptance under Section 40 of the Act must include:

(a) the applicant’s reasons for making the amendment; and

(b) a copy of the proposed completed specification as it would appear following amendment; and

(c) a copy of the marked up pages of the complete specification with the amendments clearly shown; and

(d) a statement setting out the specific parts of the original complete specification that supports each of the proposed amendments.

In view of this requirement, IPONZ examiners have been taking a strict interpretation of Regulation 58(d) and have essentially required applicants to refer to specific statements in the specification to support each and every proposed amendment being made, including for example deleting subject matter, and introducing disclaimers and multiple claim dependencies.

The proposed amendment

In CNH Industrial Belgium NV [2018] NZIPOPAT 7 (30 April 2018), the patent applicant amended two “object” statements located in the description promising various properties that the invention as claimed would achieve. The proposed amendments are provided as follows (amended text underlined):

It is an object of embodiments of the present invention to provide a baler with a good mounting of an auxiliary motor or at least provide the public with a useful choice.

It is also an object of embodiments of the present invention to provide a baler flywheel assembly, and a baler gearbox assembly especially adapted for a good mounting of an auxiliary motor or at least to provide the public with a useful choice.

Inserting statements of this nature into patent specifications has been common practice by attorneys in New Zealand and Australia, designed to overcome potential challenges to an invention’s claimed utility by essentially toning down what the invention promises.

However, the examiner declined the proposed amendment as the applicant could not point to specific support for the amendment in the specification under Regulation 58(d) for the feature “or at least provide the public with a useful choice”.

The decision

The Assistant Commissioner outlined that Regulation 58 is a procedural regulation and its purpose is to improve the efficiency and speed of the examination process by assisting the examiner to promptly identify and assess proposed amendments without needing to extensively review the specification. The Assistant Commissioner went on to clarify that Regulation 58 is not intended, nor authorised by the Patents Act, to prescribe substantive limits on what types of amendments are allowable before acceptance through an indirect mechanism of requiring that an applicant must state where specific support is found in the specification for every proposed amendment.

In dismissing the examiner’s objection, the Assistant Commissioner concluded that a better reading of this regulation is that if the applicant relies on the amendment having support in the original specification (i.e. to avoid post-dating), then Regulation 58(d) requires them to specify where that support is found. As such, given the nature of the applicant’s amendments in this case, they were considered allowable and the application proceeded to acceptance.

Importantly, the Assistant Commissioner also observed that this interpretation of Regulation 58(d) will also apply to many other types of amendments, not just the proposed amendments at issue with regard to object statements and utility.

Summary

In view of this decision, it is expected that IPONZ examiners will now relax their requirement that each and every amendment requires specific support in the specification, and patent applicants can lean on this decision in response to any strict explicit support objections in relation to proposed amendments.