First Decision on Support Requirement in Patents Act 2013
In the recent Commissioner’s Decision 2017 NZIPOPAT 16 Charles Caulder Bree the Assistant Commissioner confirmed that the test for the ‘fair basis’ requirement that applied under the Patents Act 1953 cannot be used when considering the ‘support’ requirement under the Patents Act 2013...
Bree’s patent application, entitled Modular Foundation Resistant to Ground Movement, relates to base structures for supporting buildings while also being relatively resistant to substrate movements such as arise from seismic activity or freezing. During examination an objection was raised to the effect that the two embodiments given in the specification do not provide support for the invention as claimed.
The Assistant Commissioner noted that the fair basis test under the Patents Act 1953 was well established and that its replacement with a supported by requirement in the Patents Act 2013 indicates a substantive and intended change of approach. It was also noted that the supported by requirement was substituted for the fair basis requirement during the Committee stages of the Patents Bill so as to bring New Zealand’s law in that respect into line with UK law, being part of an overall objective of attaining greater alignment with international practice.
UK case law was also considered. In the 1989 UK Patents Court decision Schering Biotech’s Application  RPC 249 it was held that the mere mentioning in the specification of features appearing in the claim will not necessarily be sufficient to establish support. Rather, the description needs to be the base which can fairly entitle the patentee to a monopoly of the width claimed. Expressed another way, the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported.
The Assistant Commissioner also distinguished the support requirement from the sufficiency of disclosure requirements. Whereas the former requires the claims to match the scope of the invention described in the specification, the latter requires the disclosure to be clear and complete enough for the invention to be performed by a person skilled in the art. Satisfaction of the sufficiency of disclosure requirement does not entail that the support requirement has been satisfied (and vice-versa).
In applying the UK Courts approach to evaluating support the Assistant Commissioner concluded that the claims are not supported by the specification because neither example discloses an invention with the same combination of features listed in claim 1. In other words, the invention described in the specification does not match the invention described in the claims.
“that these modules could be joined together or to other modules by unspecified suitable fastenings to make a single foundation owes nothing to the teaching of the patent or any principle it discloses.”