A question of support

Article  \  15 May 2018

This article discusses two patent decisions in New Zealand which consider the application of the Patent Act 2013’s requirement that the claim or claims of a patent be “supported by the matter disclosed in the complete specification”.[1] “Supported by” is a change from the “fair basis” wording of the previous Patents Act 1953. Although the original Bill as introduced to Parliament in 2008 retained the fair basis wording, it was replaced with “supported by” as the Bill progressed through the legislative process[2].

The meaning of fair basis under the Patents Act 1953 was well-settled law with many examples of its application. The “support” language is used in the both the UK and Australian Patent Acts, and it remained to be seen how the Intellectual Property Office of New Zealand (IPONZ) would apply this standard in practice. There have now been two hearings before IPONZ considering the meaning of support, Bree and Biocon[3].

Re Bree

The invention of Bree was directed to foundations, preferably for prefabricated modular buildings. The claim under consideration (amended claim 1) recited a foundation formed from modules for supporting a building, with each module having four features defined in the claim. During prosecution, the examiner objected that the complete specification provided only two examples and that these did not demonstrate the foundation as claimed in amended claim 1. The examiner therefore considered that the claim lacked support.

In the Bree decision, the Assistant Commissioner compares the corresponding sections of the 2013 and 1953 Patents Acts and concludes that the change from “fair basis” to “supported by” is a substantive one. She states that the “deliberate omission” of the words fair basis in the 2013 Patents Act “indicates that a change in approach is intended”. 

Turning to the UK, where the fair basis requirement of the 1949 Patents Act was replaced with “supported by” in the 1977 Patents Act, the Assistant Commissioner considered how this change was interpreted there.  She decided that the approach taken in Schering Biotech’s Application[4] was applicable and that assessing whether the claims are supported[5]

…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”[6]

The Assistant Commissioner made it clear that support is a separate issue from an objection that the disclosure is not “clear enough and complete enough”[7]. The latter is a question of whether the description enables the skilled person to perform the invention claimed while a lack of support objection is “that the claims do not match the scope of the invention described in the description”[8]. She referred to the UK House of Lords decision in Biogen Inc v Medeva Plc[9] for its discussion of support meaning more than the specification enabling the invention to be performed.

Coming back to the invention in question, the Assistant Commissioner agreed with the examiner that the examples of the specification did not disclose an invention with the same combination of features as claim 1. Therefore, the invention described was not the same as the invention set out in the claim and the claim lacked support. The objection was upheld.

Re Biocon

In the other decision, Biocon, the Assistant Commissioner agreed with Bree 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.

Thus, the Assistant Commissioner followed the approach taken in the UK in her interpretation of support and held that support[10]:

…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 in Biocon as defined in claim 1 was directed to a formulation that included the broad term “an emulsifier”.  The examiner objected to this general term because there was only a single reference in the original specification to polysorbate and the term 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 to perform the invention. 

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[11]:

… 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 referred to expert evidence it provided and argued that how the specification would be understood by a person skilled in the art should be considered.  The expert’s evidence was that a skilled person would realise other non-ionic emulsifiers would work in the invention.  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 by Lord Hoffmann in Biogen of the “long established principle[12]”:

…namely, 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 skilled person would understand that the same result could be achieved using different emulsifiers, even though only one was provided in the specification. The Assistant Commissioner rejected this submission because the expert evidence was directed to non-ionic emulsifiers and she did not consider that it supported the much broader term “emulsifiers”.  The objection to the broad term was maintained but the Assistant Commissioner indicated that “non-ionic emulsifiers” or “polysorbates” may be allowable.

IPONZ thus appears to be taking a similar approach regarding support as in the UK so guidance from UK cases decided under the 1977 Patents Act will be of assistance in applying the support requirement in New Zealand.  The stricter “supported by” requirement means care should be taken to ensure claims are adequately supported by the description.

This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, please contact an AJ Park representative.

[1] Section 39(2)(c) Patents Act 2013.
[2] See the commentary, page 7, Patents Bill 235-2.
[3] Charles Caulder Bree [2017] NZIPOPAT 16 and Biocon Limited and Mylan GmbH [2018] NZIPOPAT 2.
[4] [1993] RPC 249.
[5] Bree at 14.
[6] Quoting Schering at 252.
[7] Section 39(1)(a) of the Patents Act 2013.
[8] Bree at 15.
[9] [1997] RPC 1.
[10] At the second paragraph numbered 18 (page 6).
[11] At 27.
[12] Biogen at 48.