Firming up the support requirement
Wednesday 9th May 2018
Article written by: Dr Fiona Pringle
A recent decision by the Assistant Commissioner of Patents will be welcomed by those filing and prosecuting patent applications in New Zealand. This article discusses the decision which clarifies how the regulations relating to pre-acceptance amendments to a specification should be applied.
The patent application at issue in this hearing was essentially in order for acceptance. The remaining objection was that a proposed amendment to amend an object statement to include the words “or at least provide the public with a useful choice”. This type of amendment was routine under the old Patents Act 1953 and is made to address potential challenges to utility of a claimed invention. It is not commonly used in many other jurisdictions.
The examiner objected that the amendment did not comply with the regulation requiring a statement to be provided “setting out the specific parts of the original complete specification that supports each of the proposed amendments”. The applicant argued that support was found in the original specification and that the amendment did not add new matter. The applicant also pointed out that as any amendments adding new matter can lead to post-dating of a specification under the Patents Act 2013, it is not a requirement of the Act for all pre-acceptance amendments to be supported by the original complete specification.
The applicant therefore argued that the regulation should be applied less stringently. That is, it should be read as including the words “where applicable” so that specific support only needs to be provided for amendments where support is relevant. The applicant argued that the regulation does not impose a substantive requirement that every amendment must have specific support in the original specification.
The Assistant Commissioner agreed that the applicant’s reading of this regulation is “broadly correct”. She notes that the regulation is a procedural one setting out how amendments may be made. The purpose of the regulation “can be inferred as improving the efficiency and speed of the examination process by assisting the examiner to promptly identify, understand and assess the proposed amendment”.
She states “[r]egulation 58 is not intended, nor more importantly is it authorised by [the corresponding section] to prescribe substantive limits on the type of amendments that are allowed before acceptance”. She notes that where there are limits to amendments that may be made, such as after acceptance, the Act expressly recites these. Thus, reading this regulation as applying similar or more restrictive requirements to pre-acceptance amendments is contrary to the scheme of the Act. Further, such a reading could lead to “anomalous outcomes” for some types of amendments, such as deletions.
The Assistant Commissioner concludes that that the process requirements of this regulation should not be interpreted as imposing a substantive requirement for specific support to be found in the original complete specification for every amendment. Rather, a “better reading is that if the applicant relies on the amendment having support in the original specification, then [the regulation] requires them to specify where that support is found.” She notes that if an applicant does not provide a statement of support where needed, the examiner cannot be expected to “go hunting”, which may delay examination.
This pragmatic approach is a welcome clarification of these often strictly applied procedural requirements.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact a Baldwins representative.