The Patent Act 2013 requires claims of a patent to be
"supported by the matter disclosed in the complete
specification". This wording is a change from "fair basis" in
the Patents Act 1953.
The "support" language is used in both the UK and Australian
Patent Acts, and it remains to be seen how this standard will
be applied in practice in New Zealand. Two hearings before
IPONZ, Bree and Biocon, have considered this
Bree ( NZIPOPAT 16)
The invention of Bree was directed to foundations,
preferably for prefabricated modular buildings. Amended claim 1
recited a foundation formed from modules for supporting a
building, with each module having four features defined in the
claim. The examiner objected that amended claim 1 lacked
support because the complete specification provided only two
examples, which did not demonstrate the foundation as
In Bree, the assistant commissioner compared the
corresponding sections of the 2013 and 1953 Patents Acts and
concluded that the change from "fair basis" to "supported by"
is a substantive one. She stated that the "deliberate omission"
of the words "fair basis" in the 2013 Act "indicates that a
change in approach is intended".
The assistant commissioner looked to the UK, where "fair
basis" in the 1949 Patents Act was replaced with "supported by"
in the 1977 Patents Act. She decided that the approach taken in
Schering Biotech's Application was applicable, i.e.
assessing support "…is a matter of comparing the
invention described in the claims and the invention described
in the specification, and assessing if the former is "supported
by" the latter. It is not enough that the specification merely
mentions a feature appearing in the claim, rather it must be
"the base that can fairly entitle the patentee to a monopoly of
the width claimed."
Bree notes that support is a separate issue to
whether the disclosure is "clear enough and complete enough".
The latter is a question of whether the description enables the
skilled person to perform the invention claimed. A lack of
support objection is "that the claims do not match the scope of
the invention described in the description". Bree also
refers to the UK House of Lords decision in Biogen Inc v
Medeva Plc for its discussion of support meaning more than
the specification enabling the invention to be performed.
Coming back to amended claim 1, the assistant commissioner
agreed that the examples of the specification did not disclose
an invention with the same combination of features as the
claim. Therefore, the invention described was not the same as
the invention of claim 1 and lacked support. The objection was
Biocon ( NZIPOPAT 2)
In Biocon, the assistant commissioner agreed that a
change of approach from the old fair basis standard was
intended. She also reiterated that decisions under the UK
Patents Act 1977 (which has very well established case law on
this subject) will assist in applying the support requirement
in New Zealand.
The assistant commissioner followed the approach taken in
the UK in her interpretation of support and held that support
"…requires a comparison of the invention described in
the claims and the invention described in the specification,
and an assessment of whether the former is "supported by" the
latter. The scope of the claims must not be broader than is
justified by the extent of the contribution to the art, as
disclosed in the specification."
The invention as defined in claim 1 was directed to a
formulation that included the broad term "an emulsifier". The
examiner objected to this term because there was only a single
reference in the original specification to polysorbate, and
"emulsifier" was not used. Rather, the specification repeatedly
described only a particular emulsifier (Polysorbate
The applicant argued that the invention was the composition
of the claimed modified citrate buffer and while it included an
emulsifier, the particular emulsifier was not part of the
invention and any one of a range of standard emulsifiers would
The assistant commissioner agreed that the description
discussed other emulsifiers (at least in the family of
polysorbates). However, with reference to Schering
Biotech's Application she noted that "… mere
mention will not necessarily be sufficient to establish
support. Further, mention of one specific family of emulsifiers
does not on its face provide support for a broad claim that
encompasses all emulsifiers."
The applicant argued, with reference to expert evidence
stating that a skilled person would realise other non-ionic
emulsifiers would work, that the way in which the specification
would be understood by a person skilled in the art should be
considered. The applicant's position was that Polysorbate 20 as
the emulsifier was not an essential feature of the invention.
In its submissions, the applicant relied on the discussion in
Biogen of the "long established principle…that
the specification must enable the invention to be performed to
the full extent of the monopoly claimed. If the invention
discloses a principle capable of general application, the
claims may be in correspondingly general terms. The patentee
need not show that he has proved its application in every
individual instance. On the other hand, if the claims include a
number of discrete methods or products, the patentee must
enable the invention to be performed in respect of each of
The applicant argued that the same result could be achieved
using different emulsifiers. The assistant commissioner
rejected this submission because the expert evidence was
directed to non-ionic emulsifiers. She did not consider that
the much broader term "emulsifiers" was supported. The
objection was maintained, but it was indicated that "non-ionic
emulsifiers" or "polysorbates" may be allowable.
If you would like more information about the decisions
discussed in this article, please contact Baldwins Intellectual
Baldwins Intellectual Property
Level 15, HSBC House,
1 Queen St, Auckland 1010, New Zealand
Tel: +64 9 373 3137
Fax: +64 9 373 2123