A Matter of Taste: IPONZ Decision Serves Up Important Reminders on Patent Practice

Suntory Holdings Limited [2024] NZIPOPAT 11

Introduction

In October 2024, the Intellectual Property Office of New Zealand (IPONZ) issued a decision concerning a patent application NZ760443 by Suntory Holdings Limited (Suntory) relating to the enhancement of sweetness in beverages using specific combinations of high-intensity sweeteners and sodium, while maintaining palatability by avoiding saltiness.  The application faced objections through several examination reports, specifically regarding inventive step, clarity and support.  Following a third and final report issued after the expiry of the deadline for placing the application in order for acceptance under section 71 of the Patents Act 2013 (NZ) (the Act), Suntory requested a hearing and submitted a range of amended claims dealing with the examiner’s objections.  Using his discretion, the Assistant Commissioner allowed a limited number of amendments to be considered, and ultimately overturned the examiner’s objections subject to further refinement of the amended claims.

Key Issues 

Timing

The Assistant Commissioner addressed a number of timing issues related to the final examination report having been issued shortly after the section 71 deadline.  The Assistant Commissioner emphasised that hearing proceedings should not be used as a mechanism to extend examination by proposing amendments that could have been made during the examination phase.  While the Assistant Commissioner used his discretion to allow amendments to existing claims, he declined to allow Suntory to add any new claims, noting that when new independent and/or dependent claims are added after the expiry of the section 71 deadline, and during the course of a hearing, “it may not be possible under the Act and Regulations for the Assistant Commissioner to defer the Application back to the examination team to consider whether the new claims comply with the requirements of the Act and Regulations”.

Further, the Assistant Commissioner criticised Suntory’s practice of responding to examination reports very close to the expiry of response deadlines.  While IPONZ aims to process examination reports within 20 working days, the Assistant Commissioner emphasised that responses received close to deadlines may not allow sufficient time for meaningful examination and response, particularly when approaching the final section 71 deadline – and thus may compromise an applicant’s ability to achieve acceptance of its application.

Inventive Step

On inventive step, the Assistant Commissioner noted that the examiner had considered a journal article (Starkey et al) in the third examination report which was not raised or discussed in the earlier reports.  Importantly, Starkey et al was published in January 2022, well after the priority date of the application, and therefore did not comply with the prior art requirements of sections 7 and 8(1) of the Act.  As such, the Assistant Commissioner did not uphold the examiner’s objection regarding the scientific foundation of the invention, as this was based on Starkey et al and the examiner had not provided any alternative basis for the objection.

Moreover, in conducting an inventive step analysis, the examiner failed to refer to or recite the appropriate test (the Windsurfing/Pozzoli test).  Consequently, the Assistant Commissioner was unable to conclude that the test had been properly considered and applied, and thus could not identify a foundation for the examiner’s assumption that the claimed invention would have been obvious to a skilled person based on the cited prior art documents.  Having considered Suntory’s submissions, the Assistant Commissioner agreed that the prior art cited did not teach that a sodium compound has a sweetness enhancing effect, and consequently declined to uphold the examiner’s objections on inventive step.

Clarity and Support

On clarity and support, the Assistant Commissioner identified that while the examiner had raised objections against independent claims 1, 9, 17 and 25, there was significant ambiguity in how these objections were presented.  Notably, the examination report only specifically discussed claim 25, leaving uncertain whether the objections in fact extended to the other claims.  Taking a pragmatic approach, the Assistant Commissioner considered all claims together, and considered whether the claimed sodium concentration ranges were adequately supported by the experimental data in the specification.  Although the applicant sought broader ranges, the Assistant Commissioner restricted the amended claims to experimentally verified concentrations where saltiness was not detected.

Outcome

The Assistant Commissioner overturned the examiner’s objection regarding inventive step, clarity and support.  However, this acceptance was subject to specific amendments, including the deletion of several claims and the adjustment of sodium concentration ranges to align precisely with the experimental data.

Implications

This decision highlights several important aspects of patent practice in New Zealand.  First, it reinforces that applicants may be well served to take a patent application to a hearing when they believe there are strong grounds to contest objections at the examination level.  In this case, the Assistant Commissioner identified fundamental issues with the examiner’s inventive step analysis, particularly the failure to apply the Windsurfing/Pozzoli test, as well as the erroneous reliance on prior art documents that were published after the relevant priority date.

However, the decision also serves as a cautionary tale regarding post-deadline amendments.  Unlike some jurisdictions such as Europe where alternative claim sets can be presented during appeal proceedings, the Assistant Commissioner emphasised that hearing proceedings should not be used to extend the examination process by proposing amendments that could have been made earlier.  While the Assistant Commissioner used his discretion to allow consideration of the amended claims, he did not allow the newly added independent and dependent claims.

The decision also contains pointed commentary about the timing of applicants’ responses during the examination process.  The practice of filing responses very close to deadlines was criticised as potentially prejudicing applications – such conduct may not leave sufficient time for a further examination report to be issued, nor for a further response to be filed and considered before the expiry of the section 71 deadline for placing the application in order for acceptance.

Finally, as is not too uncommon, the examiner’s reports in this case failed to provide explicit reference to, and consideration of, the Windsurfing/Pozzoli test, which the Assistant Commissioner noted as potentially hindering effective dialogue between the examiner and applicant regarding the inventive step analysis.  This observation suggests that applicants might benefit from proactively requesting more detailed reasoning when facing inventive step objections that lack clear explanation of how the test has been applied.

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