New Zealand: When narrow patent claims can really work

Last Updated: 3 November 2013
Article by Kate Wilson

Recent figures from Ireland on the effect of the patent cliff are a timely reminder to CIPOs to look again at their internal practices to ameliorate the possible effect of their companies' own patent cliffs

The effect of the pharmaceutical patent1 cliff is still evident around the world, with the latest fall-out cited in new figures from the Irish Exporters Association. A contraction in the Irish merchandise sector of €2.9 billion is mainly attributed to the loss of pharmaceutical exports and coincides with Pzifer's Viagra– the main ingredients of which are made in Cork – coming off patent.

As anyone in R&D knows, you cannot necessarily force the development of breakthrough compounds such as Lipitor, Viagra or Roundup. But IP2 counsel can put practices in place to lessen the revenue drop which occurs when a major product is out of patent.

However, recent (personal) conversations with IP counsel around the world suggest that less rigour is applied to IP strategy outside of blockbuster products. Invention3 disclosure4 forms are the most common way that a chief IP officer (CIPO) hears of new developments. This method relies on those in R&D recognising that they have developed something of sufficient value to warrant the effort of submitting a form. Engineers, in particular, loathe writing up anything and thus there is an innate threshold to what is disclosed. While this natural filter can be of benefit by eliminating the dross, it also means that valuable opportunities can be lost by failing to capture what is needed for sustainable revenues.

In addition, marketing is more attuned to the needs of the organisation's customers – yet often there is no structured process by which marketing can alert the CIPO of desired product improvements. Often marketing is consulted only after R&D has proceeded along the development path. And those charged with getting regulatory approval rarely have a direct line of communication with the CIPO.

However, it is essential that the CIPO gets feedback from all sectors of an organisation (and is not limited by invention disclosure forms) to ensure that a strong bottom line continues.

One of the key barriers to IP counsel being notified of incremental developments is that they are often thought to be non-inventive, unpatentable or insufficiently valuable. To counter this, there needs to be on-going education of researchers and engineers as to how small can be valuable.

Further, as part of a cultural shift, it must be understood that it is the CIPO's job to decide what is valuable – not the researcher's.

Improvements should be recognised as inherently patentable, provided that sufficient support is given within the patent specification5. Such support can be given by experimental results that highlight the advantages of the improvement over the prior art6.

One approach is to assist in the design of the experimental study so that the patentability7 criteria can be met, rather than leaving the study parameters solely in the hands of a researcher with minimal IP training. For example, the power of selection inventions must be recognised. These can be an incremental improvement through the identification of an ideal range within a known one – that is, finding the sweet spot.

Consequently, to obtain strong patent protection, the study should have regard to the following European Patent Office guidelines:

The selected sub-range is narrow compared to the known range.

The selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end points of the known range.

The selected range is not an arbitrary specimen of the prior art – that is, not a mere embodiment of the prior art, but another invention (eg, purposive selection, new technical teaching).

The selection invention approach can be applied to more than just the traditional chemical and pharmaceutical industries.

Part of the education process is recognising that things such as mechanical tolerances and frequency bandwidths in electronics can have selection invention treatments applied to them.

One approach to lessen the impending effect of generics is for the CIPO to bring together a collection of marketing, commercial and technical parties to brainstorm potential improvements. This mix is essential as the ultimate outcome should be an improvement that marketing can promote to elevate the product above the generics.

Narrow patents are also very valuable when there are regulatory considerations such as Food and Drug Administration approval. An identical product of a competitor will also attract regulatory approval. If a competitor must design outside the claims8 of a narrow patent, this can force it to go through an expensive regulatory process for its non-infringing product, thus making it less competitive.

In this situation, narrow patent claims are usually quicker and cheaper to get to grant than broader claims.

It is critical that CIPOs are advised of on-going developments, and not just so that they can be patented. There are many instances where continued development of a product can take it further than the original patent, leaving it without protection.

To summarise, a CIPO can add value in between blockbuster patents through good practices, including being kept informed of all developments in a product, exercising rigour around the protection of selection inventions and cultivating awareness of other sectors of the organisation, such as marketing, regulatory and R&D. To add value in this way requires education and communication with the wider organisation.


1A proprietary right in an invention which provides the owner with an exclusive right for up to 20 years to make, sell, use or import the invention. In exchange for this monopoly the patent is published so that others can see how the invention works and build on that knowledge. The patented invention may also be used by the public once the patent lapses.

2Refers to the ownership of an intangible thing - the innovative idea behind a new technology, product, process, design or plant variety, and other intangibles such as trade secrets, goodwill and reputation, and trade marks. Although intangible, the law recognises intellectual property as a form of property which can be sold, licensed, damaged or trespassed upon. Intellectual property encompasses patents, designs, trade marks and copyright.

3The product of the creative process of inventing. In intellectual property law "invention" is a legal term usually describing patentable subject matter. Under current New Zealand legislation that subject matter includes any manner of manufacture which is new and involves an inventive step. However, certain types of invention are excluded from patentability. They include inventions which are contrary to morality (for example weapons of mass destruction) and methods of medical treatment (on public policy grounds that such methods should be available for health practitioners to use to the benefit of all society).

4Refers to the description of the invention provided in the specification accompanying a patent application. For a patent to be valid, the invention must be described in enough detail to enable a person who is skilled in the field of the invention to put it into practice.

5The document that accompanies a patent application. It defines the scope of the invention in the claims and provides a detailed description of the nature, use and purpose of the invention. A specification may be provisional or complete and there are different rules applying to each.

6The collective term for information (documents and prior used products, processes etc) that has been made available to the public before a given date that might be relevant to the novelty of the subject matter of a patent application.

7The extent to which an invention is able to satisfy the legal requirements to be the subject of a granted patent. This is dependent on those aspects of the invention for which protection is sought, as defined by the claims of a patent application. In general, the claims of a patent must include at least one feature that is novel, involves an inventive step and is useful to be patentable. A patent search can be carried out to assess whether an invention is patentable in view of known technology.

8Numbered paragraphs at the end of a patent complete specification which define the scope of the invention protected by the patent. The purpose of the claims is to define clearly and with precision the monopoly for which protection is sought so that others know the exact boundaries of protection.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

James & Wells Intellectual Property, three time winner of the New Zealand Intellectual Property Laws Award and first IP firm in the world to achieve CEMARS® certification.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Kate Wilson
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Mondaq Advice Centre (MACs)
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.