A recent Patent Opposition Decision by the Intellectual Property Office of New Zealand (“IPONZ”), Quirky, Inc. v Hamish Dobbie [2014] (“the Case”) illustrates the importance of providing evidence of the publication date of a webpage or an Internet document in New Zealand Patent Oppositions. It is to be noted that at present, New Zealand is a “local novelty” country, meaning that in order to anticipate, the disclosure must have been published in New Zealand, or the invention must have been used in New Zealand, before the priority date.

The Case involved Opposition Proceedings to New Zealand Patent Application No. 606198 (“the Opposed Patent Application”), which was filed in the name of Quirky, Inc., and claimed priority from United States Patent Application No.s 61/730,606 and 13/737,740, dated 28 November 2012 and 9 January 2013, respectively.

In summary, the Patent Opposition was dismissed as none of the grounds were considered by the Hearing Officer to have been made out. A direction for the sealing of the Patent was issued.

The Case

The Claims of the Opposed Patent Application were directed to a device and method for separating an egg yolk from an egg white. The Applicant asserted that the prior art of the claimed invention was a plastic water bottle. As shown in various blogs and YouTube videos, an egg yolk may be separated from its egg white using the vacuum provided by a squeezed plastic bottle having suitable dimensions. However, plastic bottles, according to the Specification of the Opposed Patent Application, have several disadvantages when used to separate egg yolks from egg whites, including rupturing the egg yolk during separation. It was also asserted by the Applicant that plastic bottles are difficult to clean, resulting in a likelihood of bacterial contamination upon repeated use, that they make an noisy cracking sound when used, and that they are not aesthetically pleasing.

The Opponent, Hamish Dobbie, opposed the Patent Application on the basis that the Applicant had disclosed the invention on its own crowdsourcing website, (http://www.quirky.com/products/426-Pluck-egg-yolk-separator/timeline), before the earliest priority date of the Patent Application. The webpage provided by the Opponent relates to the timeline of development of an egg-yolk separated product referred to as “Pluck,” using the Quirky Inc. crowdsourcing platform. This website states that the Pluck product was first “on sale” on 14 December 2012. It also states that: “on Sep 05, 2012 staff and community members joined together at Quirky HQ in New York to select Pluck to become a Quirky Invention” and provides a video recording of this event.

In a short decision, the Hearing Officer declined to consider the Internet document provided as anticipatory evidence, holding that the basis for considering an Internet document includes evidence establishing that the document allegedly disclosing the invention claimed had been made available on the Internet by a certain date. The Hearing Officer found that no such evidence had been provided by the Opponent and hence that the document could not be considered. The Opposition was dismissed and a direction issued that the Patent be sealed.

Take Home Message

When relying on a webpage, website, or other Internet document as evidence of anticipation of a claimed invention in New Zealand, it is essential to provide evidence of the date of publication of that webpage or document. Any admissions or statements on the webpage as to the date on which an invention is made public, even if such admissions are made by the Applicant of an Opposed Patent Application, are irrelevant. External evidence of publication is required, for example, the type of publication timeline information provided by online archiving resources, such as the Wayback Machine (http://archive.org/web/). In the absence of such evidence of the publication date of a webpage, IPONZ will not even consider the Internet document as evidence in Patent Opposition Proceedings in New Zealand.