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Notes from the meeting of 5 October 2010

Patents Technical Focus Group Meeting

IPONZ Boardroom

5 October 2010

1. Notes from the last meeting (4 April 2009).

The notes from the last meeting were adopted without particular comment. However, a question was raised on the comments supplied by TFG members and others to IPONZ on the consultation on the Guidelines on Swiss type claims.

Amendments arising for the comments were to the Guidelines which are now on the IPONZ website. Of particular interest were the comments relating to the mere novelty in a dosage regime as being sufficient to render a claim to a second medical indication as patentable. IPONZ has adopted the view and practice (after further consultation with for example the hearings officers) that mere novelty is not the sole criterion to be met in addressing the patentability of a dosage regime in a Swiss type claim. The details for patentability are set out in the Guidelines.

2. Matters Arising/ Action Points from Last Meeting:

Action Required	Responsibility	Due	Completed

Issue practice note where application is in order for acceptance at 1st exam	IPONZ		June 2009

3. Services Update

3.1. A complete collection of NZ specifications 1861-2004 is now accessible from Archives New Zealand. If a specification is not available from the IPONZ website then a copy may be obtained from the collection held at Archives New Zealand.

3.2. IPONZ has recently implemented a new designs examination tool called ACSEPTO. The tool will allow faster and more efficient searching of design representations. Initial reports from IPONZ users on the usefulness of this tool have been highly favourable.

3.3. To take further advantage of the new ACSEPTO tool, a process of reclassification of the design Register is underway to introduce a third level of Locarno classification to all registered designs and pending design applications. The reclassification will not have any effect upon searches performed using the IPONZ website. Searches under the reclassified register will locate the same hits as would be located prior to the reclassification under the same search criteria.

4. Designs – Restoration & Regulations

4.1. Amendments to the Designs Regulations 1954 to allow reinstatement of applications and restoration of registered designs that have lapsed through non-renewal of the copyright period have been proposed by IPONZ. A narrative form of the regulations to bring the proposed amendments into effect has also been produced by IPONZ.

4.2. Some other amendments to the regulations have been proposed including postponement of registration of an application which is otherwise in order for registration that registration. The proposed amendment reflects a similar provision (section 20(1)) of the Patents Act 1953.

4.3. The proposed regulations will be available for comment in due course. It is anticipated that the proposed regulations will be in effect by around April 2011.

5. Convention Order Update

5.1. IPONZ has proposed an amendment to the Convention Order to update the convention country list to include all the countries and regional organisations which have acceded to the Paris Convention since 2000. It was stated that New Zealand would be added to the Convention Order. Please note that New Zealand will not be added to the Convention Order as the Patent Bill contains provisions (clauses 58 and 298A) to allow New Zealand applicants to claims convention priority from a New Zealand application.

5.2. The proposed amendment to the Convention Order is anticipated to be in force by about April 2011.

6. International Applications filed at IPONZ

6.1. Recently, an internal audit within WIPO identified a number of priority documents missing from the WIPO records. WIPO requested further copies of the missing documents from IPONZ. The missing priority documents had been previously been sent to WIPO by IPONZ. Duplicate copies of the missing documents were generated and filed with WIPO.

6.2. There was some discussion on the international patent applications filed with IPONZ as the Receiving Office under the PCT over the past year. It was noted that the formalities can be relatively complex and that a significant proportion of applications received appeared to require additional documents or correction after initial filing of the application at IPONZ.

6.3. TFG members asked for details of the deficient applications filed by their respective firms. IPONZ agreed to make these details available.

7. IPONZ examination practice – overview presentation

7.1. A brief overview presentation was made to the TFG members covering IPONZ examination practice under sections 2, 18(2), 13 and 10(4) (unity, conciseness and clarity). Response dates, discretionary extensions of time, quality control and quality assurance processes, which cover the 19,000 examination reports issued over the last 12 month period, were also discussed.

7.2. Questions were invited on matters as they arose during the presentation:

7.3. First examination reports of applications

7.3.1. PCT national phase applications will be examined under the current legislation and practice of New Zealand. However, IPONZ will adopt much of the content of international reports (ISR, IPRPI & II) insofar as it applies under New Zealand patent law and practice.

7.3.2. Generally, additional searching and examination of PCT national phase applications will be performed to ensure that New Zealand specific interests are met (e.g. section 14 – prior claiming), including searching of the New Zealand patent register and internal records which are not available to the international examiner. Additional, more generic searching will also be performed where the claimed subject matter has been amended upon entry into the national phase and the amendments do not appear to have been searched or examined in the international phase.

7.3.3. Standard applications (including divisional applications) are searched in more detail against the prior art than national phase applications. The prior art search is performed using a variety of publically available patent databases such as ESPACE as well as the internal records of IPONZ. Also included in the more detailed searching are the websites of other national/regional IP offices.

7.3.4. A number of divisional applications are, in effect, a continuation of the same subject matter of the parent application. These applications will generally not be searched as extensively as other standard applications as a full search would have been performed upon the parent application. Occasionally, the examiner may consider that further detailed searching is required.

7.3.5. IPONZ does not propose to alter its examination practice to reflect a recent change in practice of IP Australia ¹ with respect to divisional applications.

7.4. Section 15(1) Corresponding Overseas Reports - for all standard applications (including divisional applications) applicants will generally be requested to provide details of corresponding applications and prior art under section 15(1). The request for information may be maintained throughout the examination process of the application. It was stressed that the on-going presence of a request under section 15(1) is not to be considered to be a bar to acceptance without a response from the applicant.

A request under section 15(1) is not an objection to the patentability of claimed subject matter, but is a request for information to facilitate examination of an application. Failure to provide the requested information where available to the applicant is unlikely to be of consequence pre-acceptance. However, there may be post-acceptance consequences where for example applicant wishes to amend the claimed subject matter in light of prior art known to the applicant prior to acceptance and which could have been provided to IPONZ prior to acceptance.

7.5. Novelty – IPONZ applies the reverse infringement test as set out in General Tire in the assessing whether or not a claimed invention is prior published under section 59. There was some discussion around the scope of the test; however, it was agreed that the test is strict requiring either ‘planting the flag’ or that performance of the prior art inevitably results in ‘something being done… which would constitute an infringement of the patentees claim’.

7.6. Unity – a typical objection in an examination to a lack unity should identify the number of separate inventions, the relevant claim number(s) and where appropriate, relevant prior art that anticipates the common subject matter (if any) residing between the claimed inventions. At the first examination report of national phase applications an IPONZ examiner will refer to the corresponding unity objection noted in an international report, such as the IPRP.

7.7. The search and examination of an application may be limited to raising only the unity issue, although frequently a number of other objections are raised at first examination where unity is raised. Where amendments are then proposed that would overcome the unity objection, then further searching and examination may be necessary. Any new objections that are raised as a result of the further searching and/or examination will not normally result in an extension of the section 19 time period to put the application in order for acceptance. The expectation is that the applicant will limit the claims to one of the inventions identified in the unity objection (or offer a case against the unity objection) to allow the examination process to proceed with sufficient section 19 time remaining for further amendments to be made if required.

7.8. Unity objections may be raised by IPONZ during the examination of national phase applications irrespective of whether or not they were raised during the international phase.

7.9. Section 18(2) is the basis in the Patents Act which directs an examiner to consider amendments to an application fully with regard to section 12 to 16. Some examination reports may issue with mention of re-examination under section 18(2) for this reason. Section 18(2) is not to be considered as a means of allowing examiners to raise new objections which could and should have been raised in an earlier (first) examination report.

7.10. Conciseness – reference was made to the IPONZ practice note ² of 2009 on conciseness of claims. IPONZ practice is to raise and maintain objections under section 10(4) where the claims are considered to lack conciseness. There still appears to be some disagreement on the precise nature of an objection which can be raised under lack of conciseness, however, the practice note sets out the practice on the matter.

7.11. Discretionary extensions of time (section 94(1)) and the time for response to examination reports. Examiners are expected to apply the practice note ³ of 2005 consistently. It would appear that there may be some inconsistencies in application of the practice note and in the manner of presenting the due date for response under section 19. IPONZ will address these issues internally.

7.12. Inventive Step & Section 2 Examiners may not raise objections under lack of inventive step (obviousness). However, examiners may raise an objection to subject matter not being a manner of new manufacture (section 2). Common objections under section 2 include that the invention is a mere collocation, an invalid selection, a mere substitution or a mere scheme or plan.

7.13. Objections to lack “not a new manner of manufacture” are more likely from IPONZ in the chemistry and biotechnology fields where compositions are not demonstrated to have an interworking relationship. In these limited circumstances, other jurisdictions (including under the PCT) an objection would be raised to the lack of inventiveness of the composition. Therefore, there may appear to be a correlation between the two objections. However, the prevalence of an objection under section 2 should be significantly less than an objection to inventive step in corresponding cases.

8. Regulation 23(2)

A question was raised on the practice of objections under regulation 23(2). IPONZ will continue to raise objections under regulation 23(2) where one or more claims in respective parent and divisional applications are encompassed within or are of identical scope to one another.

9. Hearing Office Decisions - Recognition

IPONZ is bound to follow the directions given in a specific case decided by the hearing officer and also on subsequent cases where the same fact pattern and issues arise. It was also noted that hearing office decisions will inform future examination practice.

The presence of one or more hearing decisions in the same area of law or practice should not prevent an examiner from considering matters of a similar nature where the merits of the particular application allow. For example, differences between a hearing office decision and the application under consideration based upon differences in fact patterns, interpretation of caselaw considered in arriving the decision(s) and other matters. IPONZ will continue to apply and interpret hearing office decisions to ensure consistency of practice and application of the law.

10. Amendment After Acceptance

Two instances where IPONZ has sought to refuse proposed amendments after acceptance (section 38) were raised for discussion. Specific details of these cases were not discussed as it was believed that the cases were still under examination.

11. Other Business

The pending new patent legislation provides an opportunity to revisit how IPONZ interfaces with stakeholders to ensure that high level examination and practice policy are raised and addressed appropriately.

The purpose and function of the TFG was discussed and it was commented that the TFG was useful in raising issues of general note and which may be common to all members. Matters of a case specific nature should be addressed with the examiner and where the issue fails to be resolved brought to the attention of a principal examiner or failing that, to the manager Liz Francis.