With the introduction of the New Zealand Patents Act 2013, New Zealand Examiners adopted a strict approach to the assessment of amendments, requiring Applicants to specify support in the specification for each and every proposed amendment under Patent Regulation 58(d). However, in light of the recent Patent Office decision in CNH Industrial Belgium NV [2018] NZIPOPAT 7, Examiners should now relax their approach to assessment of amendments.

Hearing before the Patent Office

In CNH Industrial Belgium NV [2018] NZIPOPAT 7, the Applicant CNH Industrial Belgium NV (‘CNH’), requested a hearing to resolve an outstanding objection raised during examination of New Zealand Patent Application No. 710063.

The amendment at issue was the introduction of the words “or at least provide the public with a useful choice” to an object clause in the specification, which was intended to address potential inutility issues. In this regard, the failure of a claimed invention to meet an object, or "promise", made in a specification could potentially result in a finding that the claimed invention is not useful.

Specifically, the proposed specification amendment read:

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.

Relevant law regarding amendments

Under section 40(1) of the New Zealand Patents Act 2013, an Applicant may, in the prescribed manner, amend that specification before acceptance. However, the Examiner considering New Zealand Patent Application No. 710063 maintained that CNH failed to comply with Regulation 58(d) – that is, the prescribed manner for making amendments - as they could not point to specific support in the specification for the proposed amendment. New Zealand Patent Regulation 58(d) reads as follows:

An amendment of a complete specification before acceptance under section 40 of the Act must include ...

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

At the hearing, CNH argued that Regulation 58(d) ought to be read down, effectively as including the words “where applicable”, so that the applicant need only identify the specific parts of the original specification that support each proposed amendment where such support is relevant (for example, to avoid post-dating of the application under Section 33(5)).

Specifying support only necessary where relevant

The Hearing Officer agreed that this reading of Regulation 58(d) is broadly correct, and that this regulation was not intended to prescribe substantive limits on the types of amendments that are allowed before acceptance. As such, the Hearing Officer indicated an Applicant need only identify the specific parts of the original specification that support each proposed amendment where such support is relevant (for example, to avoid post dating).

As highlighted at [17] “…the process requirements of Reg. 58(d) should not be read as imposing a substantive requirement that there must be specific support in the original specification for every proposed amendment. A better reading is that if the applicant relies on the amendment having support in the original specification, then Reg. 58(d) requires them to specify where that support is found.”

The Hearing Officer overturned the objection and directed the application proceed to acceptance.

In reaching the decision, the Hearing Officer declined to comment on whether the approach to utility under the Patents Act 2013 will be substantially the same as under the previous Patents Act 1953. Additionally, the Hearing Officer stressed that the interpretation of Regulation 58(d) was reached without reference to New Zealand’s international obligations.

Relaxation of amendment practice

In light of this decision, New Zealand Patent Examiners should now relax their approach to assessing minor amendments under Regulation 58(d). However, when proposing amendments, patent applicants should still have an eye to the potential post-dating of the application following addition of new matter not supported by the original specification as filed.