When New Zealand’s new Patents Act 2013 commenced on 13 September 2014, one of the less-heralded changes was the shift in the invention disclosure requirement from “fair basis” under the old Act (Patents Act 1953) to “support”, as now required under section 39(2)(c) of the new Act. A recent decision of the Intellectual Property Office of New Zealand – as it happens, the first decision issued under the new Act – has essentially confirmed what everyone had suspected all along: “Support” requires a higher descriptive standard than does “fair basis”.

Introduction

New Zealand’s new Patents Act 2013 (“the new Act”) took effect from 13 September 2014. It replaced, for non-divisional applications filed after the date of commencement, the long-since-obsolete Patents Act 1953 (“the old Act”). The new Act has been hailed not only as the dawn of a new era for New Zealand patents, but also as a sign of general strengthening of New Zealand’s various patentability criteria, such as the requirement for the invention to be adequately disclosed.

The Intellectual Property Office of New Zealand (IPONZ) has recently published decision [2017] NZIPOPAT 16. Aside from being the first IPONZ decision issued under the new Act, the case was notable insofar as it provided confirmation for the first time that “support” under the new Act requires a higher standard of written description than did “fair basis” under the old. It should be noted, however, that the legal principles applied in this decision were entirely expected; a corresponding shift in Australia’s patents legislation has indeed “raised the bar” – and as noted by the Hearing Officer in this case, the change in wording from the old Act to the new, of itself suggested that a change in approach was intended by the legislature.

Particulars of the case

As it happens, most of the particulars of this specific case are unremarkable. A hearing was requested by the patent applicant upon receipt of an examination report dated 16 January 2017, in which support objections made under section 39(2)(c) were maintained by the IPONZ Examiner. The Examiner’s position was that the “invention described in the specification [did] not match the invention as defined in the claims”. The Applicant’s position, of course, was that it did. Given the lack of precedent and the consequent lack of any accepted test (even the IPONZ Examination Manual did not recite a test for descriptive support), it was open to the Applicant to present its choice of legal argument. However, perhaps tellingly, the Applicant opted to argue certain particulars of the technology involved, rather than what the applicable test should be (i.e., whether “support” was indeed a higher standard than “fair basis”). The inference rather confirms that the eventual decision was unsurprising: support is a higher bar than is fair basis.

So what is the test for “support” under the new Act?

In paragraph 16, the Hearing Officer referred to the decision of the House of Lords in Biogen Inc v Medeva Plc [1997] RPC 1. In this decision, Lord Hoffman in turn borrowed from Exxon/Fuel Oils (T 409/91) [1994] O.J.E.P.O. 653 at [3.3]:

“Furthermore, [the legislation] also requires that the claims must be supported by the description, in other words, it is the definition of the invention in the claims that needs support. In the Board’s judgment, this requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified.” [emphasis added]

Lord Hoffman went on to elaborate that “support” requires more than that the specification enables the invention to be performed:

“But the fact that a skilled [person] following the teaching.. ..would have been able to make [the invention] does not conclude the matter.. ..It is not whether the claimed invention could deliver the goods, but whether the claims covered other ways in which they might be delivered, ways which owe nothing to the teaching of the patent or any principle it disclosed..

..there may be more than one way in which the breadth of the claim may exceed the technical contribution to the art embodied in the invention. The patent may claim results which it does not enable, such as making a wide class of products when it enables only one of those products and discloses no principle which would enable others to be made. Or it may claim every way of achieving a result when it enables only one way and it is possible to envisage other ways of achieving that result which make no use of the invention.”

Applying the above criteria to the specific facts of this case, the Hearing Officer agreed with the IPONZ Examiner that the claims were not supported by the specification because neither of the examples provided in the complete specification disclosed an invention with the same combination of features listed in claim 1. In other words, the invention described in the specification did not match the invention described in the claims – and the claims thereby did not meet the requirement for support as required under section 39(2)(c) of the new Act.

How does the New Zealand position compare with the situation in Australia?

As readers will know, Australia’s recent “Raising the Bar” Act also served to increase the written description requirement from “fair basis” to “support”. This decision of IPONZ thereby stands to provide some consistency between the laws of the two jurisdictions under which all Trans-Tasman patent attorneys now practice.

My colleague, Dr Michael Zammit has recently written two excellent articles on the increased requirements for disclosure and support under Australian practice – and their practical implications by way of patent drafting. Rather than reinventing the wheel in this article, the above two links should confirm the impression that the requirement for “support” is now similar on both sides of the Tasman. Indeed, Mike has noted in his articles the nature of the requirement in Australia and the same criteria are likely to apply in New Zealand as the case law evolves:

“The requirement of support can be summarised as being that the scope of the claims should correspond to the technical contribution to the art. The technical contribution to the art is a subtle concept that is not to be confused with the inventive concept that is often discussed in relation to inventive step. In particular, inventive concept is concerned with the identification of the core (or kernel, or essence) of the invention which entitles the inventor’s achievement to be called inventive. In contrast, the invention’s technical contribution to the art is concerned with the evaluation of its inventive concept, namely answering the question: how far forward has it carried the state of the art?”

Will New Zealand patents be more difficult to obtain under the Patents Act 2013?

As mentioned, popular opinion is that the Patents Act 2013 has raised the bar in relation to patentability criteria in New Zealand, making patents more difficult to obtain and possibly more limited in scope. If true, this could be something of a double-edged sword. On the one hand, those wishing to innovate in New Zealand are less likely to be encumbered by thickets of overly-broad, possibly invalid patents (e.g., those that under the old Act would not have been examined for inventive step) . The economic rationale for the Government wanting to achieve this position is clear – as a small economy, New Zealand should, it is argued, do all it can to encourage foreign innovation and investment. However, on the other hand, the fear is that a stricter patents regime may in turn make New Zealand less attractive to patent applicants on a cost-versus-scope-versus-population basis.

As such, if New Zealand patents are indeed found more difficult to obtain under the provisions of the new Act – and we’ve now had a three year sample of practising under the new Act suggesting that this is indeed the case, then this could be attributable to the increased support requirements (along with other significant factors such as inventive step being considered during examination).

Summary

New Zealand’s Patents Act 2013 applies to all patent applications filed in New Zealand September 2014 (with the exception of divisionals filed from old Act applications; these remain old Act cases). However, the case law is only now beginning to emerge. While it was clear that the requirements for disclosure of the invention were increased under the new Act, the extent and precise nature of disclosure required to meet the new threshold will be further clarified as the case law continues to evolve. Based on the first decision issued by IPONZ, the content of the examples in the specification will, it seems, be critical to the outcome. No doubt Examiners will refer to this new case law in future reports.

Similarly, in Australia, only one case has been decided in relation to the “new” requirements for support. Given the similarities in the language of the Australian Patents Act 1990 and the New Zealand Patents Act 2013, the historical connections between these two Commonwealth nations, and the continued rapprochement of the two countries in IP matters (e.g., the recent appointment of the trans-Tasman IP Attorneys Board), decisions in both jurisdictions may form part of a common store of precedents on which the Patent Offices and the Courts in both countries will rely.