In New Zealand and Australia it is not common practice to include drawing reference numbers in patent claims. Thus, when prosecuting applications originating from jurisdictions such as Europe where reference numbers are used in claims, New Zealand and Australian patent attorneys routinely take a conservative approach of deleting reference numbers from claims to avoid any risk that the references could in some way limit the claim scope.
Recently, the Intellectual Property Office of New Zealand (IPONZ) has begun objecting to deletions of reference numbers from the claims. The position taken by IPONZ is that deleting reference numbers requires support in the specification, such as a passage discussing the particular feature without use of a reference number. It also appears that even if the applicant can point to support for the proposed amendment, IPONZ will nevertheless still object if they consider that deleting reference numbers leads to ambiguity in the claim.
If IPONZ’s current position is that a claim without reference numbers cannot be supported by description that includes reference numbers, or reference numbers are required for clarity, then it necessarily follows that reference numbers are being used in construing the claims.
We suggest that this is a departure from the situation in Australia and Europe. European patent law is clear that reference numbers in European patents do not limit claim construction, their presence is only to help with intelligibility. The patent examiner’s manual of IP Australia takes the same position.
This departure sits uneasily with at least one aim of the New Zealand Patents Act 2013 – that being to bring New Zealand patent practice, particularly in relation to claim support, into closer alignment with Australia and Europe.
This issue has been raised with IPONZ via the Technical Focus Group of the New Zealand Institute of Patent Attorneys. We will report developments as they occur.