A review of the recent hearing decision DSM IP Assets B.V. [2023] NZIPOPAT 11.
The recent hearing decision DSM IP Assets B.V. [2023] NZIPOPAT 11 by the Intellectual Property Office of New Zealand (IPONZ) covers some useful points around the dos and don’ts for pursuing amendments in association with a hearing, and practice when a prior art document is in a foreign language and requires translation.
Background
New Zealand patent application 741784 by DSM IP Assets B.V. relates to a product by process, involving the separation and concentration of an oil. The application was filed as a PCT national phase entry in April 2018.
Three examination reports were raised, but the issues raised by the examiner were not satisfied by the acceptance deadline and the applicant requested a hearing.
The outstanding examination objections considered in the hearing related to inventive step and clarity of the claims, and the clarity and completeness of the disclosure.
Points of interest
While the hearing decision on the substantive points appears to follow previous decisions, it makes useful clarifications and serves as a reminder of important points around amendments and best practices when a prior art document is in a foreign language.
Amendment practice
Along with the hearing submissions, the applicant proposed amendments to various of the existing 16 claims and proposed 13 new claims.
In the decision, the Assistant Commissioner reiterated the previously established position that a hearing is firstly for consideration of outstanding objections, and that allowance of any amendments is at the discretion of the Assistant Commissioner.[1]
In relation to the proposed new 13 claims, the Assistant Commissioner referred to the 2020 Taiho decision,[2] where an amendment to add new claims was refused. After considering the proposed amendments, the Assistant Commissioner ultimately followed the decision in Taiho and refused to allow the amendment to add the new 13 claims.
This serves as a useful reminder to take care that any amendments proposed as part of a hearing do not extend the scope of the claims that were examined, as this will generally not be allowed.[3]
Translation of prior art
The only piece of prior art at issue in the hearing was a Japanese patent publication.
It appears that during examination the examiner relied on a machine translation of the document from the Japanese Patent Office.
No verified translation was submitted by the applicant, and instead the applicant relied in their submissions on another purportedly machine translation but did not include a copy of it with the submissions. Although a copy was subsequently provided, it seems that verification of the source of the translation was not also provided.
While it appears that no finding relied on a point of difference between the two translations, there was potential for this, as the Assistant Commissioner decided that he could not rely solely on the applicant’s source-unverified translation.
This decision provides a timely reminder to consider whether obtaining a verified translation may be worthwhile when a foreign-language prior art document is at issue. It is also an example of the importance of ensuring that any documents relied on in arguments are readily available to or are provided to IPONZ, and of the importance of ensuring that the source of documents can be clearly established by IPONZ.
Another useful reminder from the decision is the affirmation by the Assistant Commissioner that where there is unclarity in a translation, the interpretation consistent with the invention claims should not be assumed to be the correct one. [4]
Decision
The hearing was ultimately successful for the applicant, with the substantive issues deemed to be overcome with the inclusion of some amendments.
Conclusions
Special care should be taken in any hearing to ensure that proposed amendments do not extend the scope of the claims and cause the amendments to be refused for this reason.
Additional issues are introduced, and pitfalls may be created, where the examination of a patent application includes prior art which requires translation into English.
[1] DSM IP Assets B.V. [2023] NZIPOPAT 11 at [19], [20].
[2] Taiho Pharmaceutical Co., Ltd. [2020] NZIPOPAT 5.
[3] DSM IP Assets B.V. [2023] NZIPOPAT 11 at [132].
[4] DSM IP Assets B.V. [2023] NZIPOPAT 11 at [46].
