Ellis Terry Overturns Restrictive Amendment Practice

Applicants in New Zealand have been suffering under a restrictive amendment practice adopted by IPONZ that would have left applicants unable to remedy potentially fatal deficiencies. Ellis Terry recently took a case1 to a hearing that has overturned this practice.

New Act and Regulations

Under the new Patents Act 2013 it is a requirement that all claims must be “supported” by matter disclosed in the specification. The regulations governing the process for amendment of the specification also use the word “support”.

IPONZ Practice

IPONZ interpreted the regulations to require “support” (as used in the Act) for any amendment to either the description or claims. This practice was adopted despite the fact that the Act specifically provides for the post-dating of amendments; post-dating could clearly only occur in the case of unsupported amendments.

The issue in question

It is uncertain under the new Act whether classical inutility (where a claim is invalid if it fails to meet the objects of the invention) still exists, although the IPONZ website says that classical inutility does still apply, as is the case in Australia by virtue of an explanatory memorandum to a similar section.

In the case in question an amendment was requested to amend objects of the invention by adding the alternate object “to at least provide the public with a useful choice”. Such amendment had been routinely allowed under the previous Act.

IPONZ objected that there was no “support” for the added words. It is true that there was no wording that could be pointed to that provided “support” (as used in the Act) for this wording. Failure to allow such an amendment could have left the applicant with an incurable flaw that could render its patent invalid with no way to remedy the situation. This would have put foreign applicants, unaware of this arcane ground of invalidity, in a perilous position.


Upon reviewing the statutory context the hearing officer ruled that the regulations did not impose a substantive requirement for specific support for every amendment. Rather, the regulations are procedural and are intended to expedite the examination process; an applicant relying on support in the original specification for an amendment should point to support so an examiner does not have to ‘go hunting’. The hearing officer indicated that support may not be required for deletions or amendments to improve conciseness. The addition of ‘or to at least provide the public with a useful choice’ was allowed.

This is a welcome decision that will relieve applicants that have been faced with exasperating support objections.

Trade mark protection – What should you register?

Picture this; you develop a trade mark for a hat, do some due diligence, find it is clear and secure a trade mark registration for “hats”. Fast forward five years, and business is going well. You’re thinking about expanding your product range into “belts” and invest a lot of money into the new product. Then on launch day, you find out someone else is using just about the same trade mark on “belts”. Worse still, these other people have a trade mark registration and they are now suing you for trade mark infringement.

What could you have done to avoid this situation?

Under New Zealand law there is no requirement for the filer of a trade mark application to show that it has used its trade mark in New Zealand in order to gain registration. This allows applicants to claim an area of exclusive right which is actually broader than the area where the trade mark is currently being used and to mark out areas of potential future growth.

A key benefit in spending the time and money in securing a broad registration at the outset is the fact you do not need to show evidence that your trade mark is in use before you sue for trade mark infringement. This means you could use your broad trade mark registration rights to stop other traders encroaching into your future growth areas.

By comparison, an action under the Fair Trading Act or for passing off requires that you have a reputation in trade before you assert your rights. By their nature, these actions are limited to the area where you are actually using your trade mark. A broadly scoped registration will therefore mean you could sue on more rights than if seeking to sue under the Fair Trading Act and/or for passing off.

The next question is how broad is too broad?

The fact that you have a registered trade mark does not mean that it is invulnerable to attack by third parties. If you file for goods where you have no real intention to the trade mark, the registration may be immediately vulnerable to removal from the Register.

Further, once a trade mark registration is more than 3 years old, it is vulnerable to removal in relation to all the goods and services described in the registration where no use has been made.

If your registration is obviously too broad, an attempt to sue for trade mark infringement could result in a counter-suit for removal of the trade mark registration.

A good rule of thumb therefore is focus your trade mark on your goods and services, and cover what you are using, but to also bear in mind the option to seek more rights.

The skill in crafting application descriptions which allow the owner to focus rights to their best advantage is developed through years of reviewing the Register, the market place and recent trends in examination for trade mark applications, removal actions and infringement action.

Our recommendation is to always take advice before filing applications. Extra outlay in the early stages of a filing strategy could avoid litigation and argument in the future.