Betting on Allowability of Late Patent Claim Amendments Proves Too Risky

In Angel Playing Cards Co Ltd [2025] NZIPOPAT 6 the Assistant Commissioner (AC) refused claim amendments that were only made after the section 71 deadline had passed.

Declaration of House Advantage
Angel Playing Cards’ application concerns a casino game management system that in addition to calculating the casino’s win or loss for specified periods of time or instances of a casino game for each or a combination of tables, can also detect misconduct, a mistake or fraud in betting or settlement of a chip. Through the combination of surveillance cameras for monitoring play, artificial intelligence (AI) for image recognition and radio-frequency identification (RFID) tags buried in betting chips, bets can be tracked and an alert raised when an unusual situation relating to betting or profit is identified.

The combined use of surveillance cameras, AI and RFID tags in chips for various purposes by casinos was already known to those skilled in the art prior to the priority date. The initial examination reports raised and maintained a lack of inventive step objection in relation to all claims, as the claimed subject matter was considered to only differ from the cited prior art in ways that were obvious adaptations of the prior art.

Last Call for Bets
The section 71 deadline by which the application needed to be placed in order for acceptance was 9th February 2025. In its response just prior to that deadline the applicant submitted 18 claims for consideration, with claims 1, 3, 17 and 18 being independent claims, claim 2 being dependent on claim 1 and the remainder ultimately being dependent on claim 3. The only amendments made amongst those 18 claims were amendments to claim 1 and making two of the claims that were dependent upon claim 3 dependent upon claim 1 instead.

The relevant amendment to claim 1 involved adding an alarm function to the claimed casino game management system, which would generate an alarm when its AI capabilities determined that a unique or noteworthy situation concerning the casino’s profit or loss had arisen. The specification as filed contained sufficient support for the amendment. The examiner’s final report issued shortly after the section 71 deadline, with the examiner agreeing that the added alarm function is neither explicitly disclosed nor obvious to the skilled person based on the cited prior art. While the cited prior art included alarm function capabilities, the alarm was not generated when the profit rate calculated from the total betting amount is determined to be a unique situation by the AI. The AC agreed with that finding. Consequently, claims 1, 2, 15 and 16 were accepted.

Late Bets Disqualified
However, the inventive step objection was maintained for independent claims 3, 17 and 18 and the claims dependent on claim 3. At the hearing the applicant sought to amend claims 3, 17 and 18 by essentially adding in the same alarm function that was added to claim 1. While acknowledging that adding that subject matter to the claims would overcome the inventive step objection, the AC refused to allow those amendments. The primary reason being that the section 71 deadline had passed. While the AC has some discretion to allow late amendments it was held that the applicant could have made the amendments prior to the section 71 deadline passing and there were no extenuating circumstances that favoured allowing late amendment. Consequently, the application was only held to be allowable for claims 1, 2, 15 and 16, which would need to be renumbered as claims 1, 2, 3 and 4.

Hedging Bets?
Given that the legislation and previous decisions have been quite clear about late amendment only being allowed in exceptional circumstances, it looks like the applicant hedged their bets by amending some claims while seeking the hearing officer’s opinion on the examiner’s lack of inventive step finding for others. This can be a reasonable strategy when the section 71 deadline prevents further argument with the examiner and broader protection is important to the applicant.

Cashing Out
As the hearing involved challenging the examiner’s inventive step findings the determination of whether the differences from the prior art constitute steps which would have been obvious to the person skilled in the art or whether they require any degree of invention were made without the assistance of expert evidence. Such expert evidence invariably features in third-party opposition and revocation proceedings where the existence of an inventive step is contested. It will be interesting to see whether any third parties seek to challenge the existence of an inventive step in the allowed claims.

Authors: Quinn Miller and Pritesh Lohani

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