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In Oligoscience Biotechnology GmbH v Commissioner of Patents [2025] NZHC 3255, the High Court of New Zealand upheld the rejection of Oligoscience patent application for lack of inventive step. Beyond the substantive outcome, the case highlights subtle but important differences in patent procedures and rules of evidence between New Zealand and Australia, and the value of specialist local expertise and advice.
Background: procedural missteps and missed opportunities
Both New Zealand patent application no. 761328 and a corresponding Australian patent application were filed by the same Australian-based firm with a presence throughout the Asia-Pacific region, but no office in New Zealand.
Under the joint patent attorney registration regime,1 Australian patent attorneys are entitled to practice before the New Zealand patent office and vice versa. However, this case is the latest to illustrate concerning gaps in the knowledge and training on New Zealand’s distinct requirements among some Australian-based firms.2
Foreboding the troubles to come, in late 2023 the New Zealand patent application lapsed due to a “filing error”.3 Possibly due to docketing failures associated with New Zealand’s six-month deadline for responding to the first examination report.4
The patent application was successfully restored, but the patent office’s inventive step objections were unable to be overcome within the remaining time available for securing acceptance of the application.5
Meanwhile, the opportunity for filing a divisional patent application had passed so the applicant had no option but to request a hearing on the outstanding objections before an Assistant Commissioner of Patents. But the Assistant Commissioner ruled key evidence inadmissible and upheld the examiner’s inventive step objections.6
What the Court said about the evidence and submissions
On appeal to the High Court, Churchman J was unsparing in his assessment of the appellant’s evidence and pleadings. Several points stand out.
First, the Court agreed with the Assistant Commissioner that key evidence summarising the methodology and findings of the proposed invention was inadmissible. It was neither sworn nor in affidavit or statutory declaration form.8
Second, the Court rejected an attempt in oral arguments by the Appellant to rebut a concession to the Assistant Commissioner that a particular review article represented common general knowledge finding that, in the absence of any independent expert evidence to the contrary, this was the case.9 This was critical to the Court’s conclusion that a person skilled in the art would be readily led to combine two prior art references.
Third, the Court gave little weight to the inventor’s declaration, noting her lack of independence and that her evidence went more to results than to whether the claimed steps would have been obvious at the priority date.10
Fourth, attempts to introduce new evidence in the written submissions were declined. The Court emphasised the closed-record nature of such appeals and the need to seek leave to adduce additional evidence, which was neither sought nor granted.11
Finally, the appeal pleadings alleged that the Assistant Commissioner engaged in impermissible hindsight reasoning to “mosaic” two prior art references without identifying a contemporaneous motivation to combine the teachings. The Court restated the orthodox New Zealand position: it is impermissible to combine documents for novelty, but it is appropriate to consider combinations for obviousness if that is what a skilled person would do. On the facts, combining the two prior art references was obvious, not inventive.
Appeals in New Zealand are re-hearings on the record
The judgment plainly reflects the New Zealand framework for appeals from patent office decisions. While the Court will reach its own view on fact and degree, appeals are heard by way of re-hearing on the record. Evidence is ordinarily by statutory declaration or affidavit, ideally from an independent expert, with tightly controlled leave to adduce additional material. The High Court will give proper weight to specialist decision-makers and expects parties to identify error or persuade the Court to a different conclusion on the established record.
That stands in contrast to the Australian practice, where appeals from the Patent Office to the Federal Court are typically de novo, with broader scope to lead new evidence and recast the case.
The consequences of cutting corners on evidence submitted for the initial hearing were predictable: critical material was ruled inadmissible or given minimal weight, key arguments failed, and the evidence could not be patched up on appeal in the High Court.
NZ patent practice is different, specialist local expertise is essential
New Zealand counsel were engaged only shortly before the High Court appeal hearing. By then the die had been cast.
The result reflects how quickly New Zealand-specific procedural and evidential traps can bite: an evidentiary record deficient under New Zealand law, concessions made at the patent office that shaped the appeal, missed opportunities to marshal independent expert support aligned to New Zealand tests.
For patent applicants and litigants, the message is clear. New Zealand’s Patents Act, evidence rules, and appeal procedures impose different demands than Australia’s. Early engagement of local attorneys is advisable.
| New Zealand | Australia | |
| Time limits for responding to the first examination report |
6 months for substantive response12 12 months for overcoming all objections13 |
12 months for overcoming all objections14 |
| Time limit for divisional applications |
Earlier of:
|
3 months from acceptance of the parent application15 |
| Rules of evidence in patent office proceedings | Witnessed statutory declaration or affidavit | No formal rules of evidence17 |
| Appeal process | Re-hearing18 | De novo19 |
Table 1: Summary of the differences in patent law between New Zealand and Australia highlighted in Oligoscience v Commissioner of Patents.
The bottom line
The High Court’s dismissal rested on orthodox New Zealand doctrine: a skilled person would combine the teaching of two prior art references without invention. But the more enduring lessons are procedural:
- shorter time limits apply during prosecution in New Zealand
- New Zealand’s appeals are re-hearings on the record
- evidence must meet New Zealand’s formal standards
- pleadings and submissions at the patent office matter on appeal, and
- independent expert testimony is often decisive.
Australian-honed strategies can misfire in this environment. Local rules and judgement should lead from the outset.
- Patents Act 2013, s 271; Arrangement between the Government of Australia and the Government of New Zealand Relating to Trans-Tasman Regulation of Patent Attorneys, 2013.
- Chapman Tripp Patents “New Zealand’s patents regime can undo the unwary”, 5 April 2024 https://chapmantripp.com/trends-insights/new-zealands-patents-regime-can-undo-the-unwary/
- OligoScience Biotechnology GmbH [2024] NZIPOPAT 14 (28 November 2024), at [6].
- Patents Act 2013, s 67.
- Patents Act 2013, s 71; Patents Regulations 2014, reg 80.
- Above n 3.
- At [37] and [38].
- Patents Act 2013, s 209; Oaths and Declarations Act 1957, ss 7–9; High Court Rules 2016, r 9.76.
- At [48]-[53].
- At [54]-[57].
- At [28] and [76].
- Patents Act 2013, s 67.
- Patents Act 2013 s 71; Patents Regulations 2014, reg 80.
- Patents Act 1990 (Cth), s 142(2)(e); Patents Regulations 1991 (Cth), reg 13.4(1)(b).
- Patents Act 1990 (Cth), s 79B(3)(b); Patents Regulations 1991 (Cth), reg 6A.1(1)(b)(i).
- Patents Act 2013, s 209.
- Patents Act 1990 (Cth), s 214C; Patents Regulations 1991 (Cth), regs 5.23, 5.24, 22.13.
- High Court Rules 2016, r 22.34(1).
- Patents Act 1990 (Cth), ss 51, 160(a).
