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New Zealand: How has the requirement of support been interpreted?

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 issue.

Bree ([2017] 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 claimed.

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 upheld.

Biocon ([2018] 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 20).

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 be effective.

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 them."

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 Property.

Dr Fiona

Baldwins Intellectual PropertyLevel 15, HSBC House, 1 Queen St, Auckland 1010, New ZealandTel: +64 9 373 3137Fax: +64 9 373

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