Amendments during the course of a patent proceeding

Introduction

This document reflects the current IPONZ approach to requests for amendment of the accepted complete specification, pleadings and other hearings documents during a proceeding. It is intended to be read in conjunction with, and is subject to, the relevant Patent legislation.

Parties may request to amend their complete specification, pleadings or other hearings documents at any time prior to the hearing. The Commissioner may allow the amendment if he or she thinks fit and on terms that he or she may direct. These are covered within sections 1, 2 and 3 of this document.

1. Requests to amend the accepted complete specification during a Proceeding

This document reflects the current IPONZ approach to requests for amendment of the accepted complete specification including the disclosure and claims during a proceeding.

1.1 Request to amend claims

An applicant/patentee may request to amend their accepted complete specification prior to the hearing.

An amendment request must be filed on the proceeding case file, and not the patent case file. ¹

Any amendments to the accepted complete specification put forward in proceedings are unconditional once allowed by the Commissioner. ²

1.2 The relevant provisions for amendment to the complete specification after acceptance

The Patents Act 1953

Amendments must comply with section 40(1). Amendment can only be by way of:

• Disclaimer;
• Correction; or
• Explanation.

No amendment of the accepted complete specification will be allowed, except for the purpose of correcting an obvious mistake, the effect of which would be that:

• the specification as amended would claim or describe matter not in substance disclosed in the specification before the amendment; or
• that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

The Patents Act 2013

Amendments must comply with sections 83(1) and 83(2). Except for the correction of an obvious mistake, an amendment is not allowable and must not be made if:

• the specification as amended would claim or describe matter that was not in substance disclosed in the specification before the amendment; or
• a claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

1.3 The request

Requests to amend the accepted specification must contain the following information:

1. a marked up and a clean copy of the amended claims;
2. a clean copy of the complete specification incorporating the amended claim set; and
3. detailed reasons for the amendment. ³

The other party, for example, the opponent or applicant for revocation should be served with the amendment request, clean and marked up copies of the amended claims, and the reasons for amendment.

1.4 Consideration of the request

On receiving a request for amendment the Commissioner will:

• halt the proceeding;
• give the other party 10 working days to make submissions on the proposed amendment;
• then pass the request for amendment, supporting documents and any submissions from the other party to the patent examination team who will consider whether the amendments comply with the requirements for amendment after acceptance; and
• report on the allowability of the proposed amendment.

1.5 Adverse examination report

The applicant/patentee will be given 20 working days to respond to an adverse report. The other party will not be entitled to make further submissions.

The applicant/patentee may respond to subsequent adverse reports. The applicant/patentee has 20 working days to reply to each subsequent adverse report. This response may take the form of further justification of the proposed amendments or may take the form of updated amendments to satisfy the objections in the adverse examination report. If an impasse is reached the amendment request will be formally refused.

If the applicant/patentee does not respond to an adverse report the amendment is disallowed. The applicant/patentee may also respond by expressly withdrawing the amendments. In either case the proceeding will be recommenced.

1.6 Affirmative examination report

Where the amendments are acceptable the applicant/patentee will be given 10 working days to file an amended counterstatement incorporating the amended claims (if they have not already done so).

The proceeding will then be recommenced. The next steps will depend on the stage the proceeding was at when the request to amend was made. By way of example:

• once the counterstatement incorporating the amended specification has been filed, a deadline for the other party’s evidence will be set. The other party may file amended pleadings in response to the amendments when filing their evidence;
• if the claims are amended during the other party’s evidence stage they will be set a 20 working day deadline to complete their evidence or to file further evidence;
• if the claims are amended during the applicant’s/patentee’s evidentiary stage the other party will be given the opportunity to amend their pleadings and to file further evidence in chief if required. The other party will be given 10 working days from the date of the amendments being approved by the examiner to indicate if it intends to do so. A further 20 working day deadline will be set for the other party to file its amended pleadings and/or further evidence if it elects to do so.

1.7 Hearing on the amendment

The Commissioner will advise the parties of the proposed decision whether or not to allow the amendment.

If the amendment is declined the applicant/patentee has 10 working days to request a hearing on this proposed decision. If no hearing is sought the decision will become final. A request for a hearing must be accompanied by the hearing fee. ⁴

If the amendment is allowed and the other party has concerns with the amendment these are usually best dealt with at the substantive hearing. ⁵

2. Requests to amend pleadings

2.1 Request to amend pleadings

Requests to amend pleadings must contain the following information:

1. details of the application, notice, or document to be amended;
2. a clean and marked up copy of the application, notice, or document to be amended; and
3. detailed reasons for the amendment addressing both the nature of the amendment and the timing of the request.

The onus is on the party requesting the amendment to provide suitably clear and detailed reasons to satisfy the Commissioner that it is appropriate to allow the amendment. ⁶  A failure to provide clear reasons will see the request rejected.

In some circumstances supporting evidence in statutory declaration or affidavit form may be required to support the request. For example, where there has been extreme delay or exceptional circumstances are claimed.

2.2 Commissioner will consider the request

If the request is to correct a clerical error or obvious mistake, the Commissioner will likely allow the amendment, without seeking comment from the other party.

The Commissioner will also likely allow the amendment if the request relates to the initiating pleading and no pleading in response has been filed.

2.3 Opposite party’s submissions on the request may be sought

For contentious matters the Commissioner will give the opposite party 10 days to make submissions on the request.

The proceeding will usually be halted at this stage to allow any submissions to be filed and a decision on the amendment to be made.

2.4 Commissioner’s proposed decision on contentious amendment requests

The Commissioner will advise the parties of the proposed decision after considering the amendment request and any submissions.

The Commissioner will consider the overall justice in the circumstances of the request in deciding whether to allow the amendment. ⁷ Relevant factors will be: ⁸

• the diligence of the party making the request;
• the relevance of any new documents such as new prior art included in the amendment;
• the time elapsed since the filing of the original documents; and
• whether the delay is unjust or against public interest.

The public interest balances the principle that the Commissioner should have relevant information in front of him or her with the requirement that there should not be undue delay in the opposition process, prolonging in the public mind uncertainty as to monopolies granted. ⁹ Parties address both aspects in their submissions.

This consideration of the amendment request will take account of:

• the stage of the proceedings;
• the further steps or evidence that may be required as a result of the amendment;
• whether the case is scheduled to be heard;
• the conduct of the parties;
• the prejudice to the parties;
• matters of fairness and natural justice;
• the public interest in having the matter determined on the best evidence;
• the public interest in proceedings being dealt with in a timely manner.

Typically, the later a request to amend is made the less likely it is to be granted.

2.5 Right to a hearing on Commissioner’s proposed decision

The Commissioner will advise the parties of the proposed decision on allowing the amendment.

The adversely affected party has 10 working days to request a hearing on this proposed decision. If no hearing is sought the decision will become final.

Any request for a hearing must be accompanied by the hearing fee. ¹⁰

2.6 Amended Counterstatement

If the initiating pleading is amended the Commissioner will allow one month for the filing of an amended counterstatement.

2.7 Further evidence may be required

Further evidence from the parties may be required depending on the stage of the proceedings that the amendment has been allowed. For example, if the amendments include additional prior art.

IPONZ will set appropriate deadlines for filing of the evidence, if required.

3. Requests to amend other hearings documents

This document reflects the current IPONZ approach to requests for amendment of documents, in particular evidence, during a proceeding.

A party may request to amend a document filed in a proceeding at any time. The Commissioner may allow the amendment if he or she thinks fit, and on terms that he or she may direct.

3.1 Requests to amend other hearings documents

Requests to amend a document must contain the following information:

1. details of the reasons for the amendment(s); and
2. a clean and marked up copy of the a document to be amended; or
3. amended evidence if appropriate.

3.2 Consideration of the request

For contentious matters, the Commissioner will give the opposite party 10 days to make submissions on the request.

The Commissioner will consider the overall justice of allowing the amendment. The factors and considerations taken into account for a request to amend pleadings are also relevant to allowing amendment of other documents.

3.3 Right to a hearing on Commissioner’s proposed decision

The Commissioner will advise the parties of the proposed decision on allowing the amendment.

The adversely affected party has 10 working days to request a hearing on this proposed decision. If no hearing is sought, the decision will become final.

Any request for a hearing must be accompanied by the hearing fee. ¹¹

Footnotes

• 1 Due to the practical operation of section 38(6) of the Patents Act 1953/section 88 of the Patents Act 2013.
• 2 Resmed Limited v Fisher & Paykel Healthcare Limited [2016] NZIPOPAT 21
• 3 Smith Kline & French Laboratories Limited v Evans Medical Limited [1989] 1 FSR 561, 569; Chevron Research Companies Patent [1970] RPC 580.
• 4 Regulation 4 of the Patents Regulations 1954 and Regulation 172(3) of Patents Regulations 2014
• 5 See for example Mapuna Turner v New Zealand Racing Board [2004] NZIPOPAT 10 and Nine IP Limited v Proline Products (NZ) Limited [2018] NZIPOPAT 14.
• 6 Smith Kline & French Laboratories Limited v Evans Medical Limited [1989] 1 FSR 561, 569
• 7 Bayer New Zealand Ltd v Merial Ltd [2017] NZHC 2946, at 107.
• 8 Permutit Co Ltd's Application [1964] RPC 22.
• 9 Machinery Developments Ltd v Sealed Air (New Zealand) Ltd [2003] NZIPOPAT 1 at p 15.
• 10 Regulation 4 of the Patents Regulations 1954 and Regulation 172(3) of Patents Regulations 2014.
• 11 Regulation 4 of the Patents Regulations 1954 and Regulation 172(3) of Patents Regulations 2014.