It has been several years since the ‘new’ New Zealand Patents Act came into force and we are beginning to see how the practicalities of this regimen are playing out. The recent decision, Intelli Particle Pty Ltd (‘Intelli’)[1], illustrates some important aspects of contemporary New Zealand practice.
Despite being the subject of a Global Patent Prosecution Highway request based on allowance of a corresponding US application, the Applicant had to resort to being heard to address outstanding examination objections. This is because they were unsuccessful in placing their application in order for acceptance within 12 months from issuance of the first examination report.
Users familiar with the New Zealand patent system will remember that continuing prosecution by filing a divisional application is not always possible given the five-year deadline to validly request examination. This situation is exacerbated by significant delays in examination faced by the chemistry and life sciences divisions.
In this case, the Applicant chose to be heard in person, as opposed to a re-review of prosecution material already on the file wrapper or by additional written submissions. The Intelli decision highlights the strict stance taken under local practice in relation to support and inventive step. This was highlighted by the Assistant Commissioner construing the inventive concept on the basis of evidence provided by an inventor, and finding that an essential feature was missing from the claims. Further, this essential feature of “use of mixed morphologies” was not explicitly supported by the disclosure in the specification. Despite reaching this conclusion the Assistant Commissioner directed amendments to secure acceptance based on alternative language that did find explicit support in the specification.
Having taken a tough stance on the substantive legal issues of support and inventive step, and after examining several auxiliary claim sets, the Assistant Commissioner gave the Applicant 20 days to comply with the directed amendments, which is not-so-coincidentally aligned to the time with which to file an appeal to the High Court.
This decision serves as a reminder for Applicants to:
- Request examination on filing for chemistry, biotech and life sciences applications to give enough time to file any divisional applications if required;
- Be prepared for strict examination, with objections raised that may not be addressed by simply conforming the claims to those allowed in other jurisdictions; and
- Make use of auxiliary claim sets when facing a hearing.
For more tips and traps on New Zealand practice, check out my recently published video available here.
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