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Assistant Commissioner of Patents Luiten has refused grant of Resmed’s New Zealand patent application no. 780711 following an opposition by Fisher & Paykel Healthcare.1 The decision, taken under the repealed Patents Act 1953, is notable for at least three reasons.
It is a useful reminder that:
- if a patent applicant relies on a coined term such as “dual therapy” to distinguish the prior art, that term should be clearly explained in the specification
- broad functional claim language such as “adapted to” may do less narrowing work than applicants expect, and
- the Commissioner may reconsider whether an opposed application falls within the transitional provisions of the Patents Act 2013.
It is also a rare example of an opposition under the 1953 Act succeeding in totality. We outline the background, the findings, and the broader implications of the case.
Chapman Tripp Patents acted for the successful opponent, Fisher & Paykel Healthcare.
Background
The opposed application concerned respiratory therapy apparatus for delivering air to a patient’s airways. The accepted claims were directed to apparatus including flow generator apparatus, sensors, and controllers said to control a “dual therapy” using two control loops: one for pressure and one for flow rate.
Although the opposed application was filed in 2021, it had been antedated through a chain of divisional applications back to a 2014 parent. That meant the application, and the opposition, proceeded under the repealed Patents Act 1953, not the current 2013 Act.
Fisher & Paykel Healthcare opposed the application on several grounds, including prior publication and obviousness. The Assistant Commissioner upheld the opposition on both grounds and refused grant.
That outcome is significant in itself. Under the 1953 Act, opposition proceedings favour patent applicants, with:
- limited grounds on which the application may be opposed2
- the claimed invention needing to be clearly lacking an inventive step to be refused as obvious3
- the applicant receiving the benefit of the doubt, and
- the function of an opposition proceeding having been held to weed out only the “manifestly untenable” cases.4
This decision shows that, even on that standard, broad claims remain vulnerable where the prior art and claim construction point firmly in one direction.
“Dual therapy” proved too vague
A central issue was the meaning of “dual therapy” in the sole independent claim.
Resmed argued for a narrow interpretation tied to switching between different therapies without removing the patient interface or ending the therapy session. But the Assistant Commissioner found that the specification did not clearly define the term and that the claims did not justify reading in the narrower limitations advanced by the applicant.
Instead, the claims were construed broadly. On that construction, the apparatus only needed to be able to provide air at a therapeutic pressure and at a therapeutic flow rate, whether in a single flow or two separate streams, and whether simultaneously or at different times.
That broader reading was fatal. It brought the prior art squarely within the scope of the claims.
For applicants, the lesson is straightforward: if a coined or non-standard term is central to patentability, it should be clearly and consistently explained in the specification. If it is left vague, it may be given a broader meaning than intended.
“Adapted to” did not save the claims
The decision is also a useful reminder that functional language may have very little effect in narrowing the scope of the claims.
The independent claim referred to a flow generator apparatus “adapted to couple with a patient interface for delivery of the flow of air to a patient”. The Assistant Commissioner gave that wording very little weight. A key reason was that claims 1 to 7 did not include the patient interface itself as an essential integer of the alleged invention, nor recite any specific type of patient interface. That meant the claims were not confined to coupling with the specific patient interfaces that were the focus of much of the detailed description in the specification.
The broader point is that “adapted to” and “configured to” language will not necessarily rescue a claim if the surrounding claim structure is itself broad. If the applicant wants to rely on a particular architecture or interaction between components, that usually needs to be claimed more directly.
Prior art findings
The Assistant Commissioner found that both of the cited prior publications disclosed apparatus falling within the claims as broadly construed. On that basis, the opposition succeeded on both novelty and obviousness.
Impact of the transitional provisions
The patent application was treated as having been made under the 1953 Act by operation of transitional provisions within the 2013 Act.
These provisions have previously been described as “necessarily quite complex”.6
The Assistant Commissioner, in obiter, expressed doubt that the opposed application was entitled to this benefit, indicating that the issue would be revisited if the decision were successfully appealed:7
…A definition of the invention expressed in a smaller number of essential terms than… in the original filing in 2014 would seem prima facie to be a broadening of the disclosure of the invention which would attract a direction that the application and complete specification be post dated to the date of the filing of the amended claims... If post-dating were to be directed then in accordance with s 257 of the Patents Act 2013, the application and complete specification would be subject to the provisions of the Patents Act 2013.
Why this decision matters
This is an important New Zealand opposition decision. It confirms that:
- unclear terminology can create real claim construction risk
- functional claim language may not meaningfully limit claim scope unless supported by the rest of the claim and disclosure
- although the “fair basis” and “in substance disclosed” requirements are not statutory grounds for opposition under the 1953 Act, the Commissioner may consider them by virtue of the transitional provisions of the 2013 Act; and
- pre-grant opposition remains a useful tool for challenging the validity of a patent application, even under the applicant-friendly provisions of the 1953 Act.
For parties involved in New Zealand patent disputes, the case is also a reminder that evidence and careful claim construction are central to opposition strategy. In the right case, they can decide the outcome.
Chapman Tripp Patents was pleased to act for Fisher & Paykel Healthcare in securing this result. The decision highlights the value of combining technical understanding, close attention to claim language, and a focused opposition strategy in New Zealand Patent Office proceedings.
- Resmed Pty Ltd v Fisher & Paykel Healthcare Limited [2026] NZIPOPAT 6 (6 July 2026).
- Patents Act 1953, s 21(1). cf s 41 for the grounds available for revocation post-grant, which includes the additional grounds of entitlement, utility, best method, clarity, fair basis, false suggestion, secret use, and contrary to law.
- s 21(1)(e). cf s 41(1)(f).
- Beecham Group Ltd v Bristol-Myers Company (No 2) [1980] 1 NZLR 192 at 213; Saxpack Foods Ltd v J Wattie Canneries Ltd HC Wellington M454/85, 11 July 1988 at 9; Sealed Air New Zealand Ltd v Machinery Developments Ltd HC Wellington CIV-2003-485-2274, 25 August 2004 at [8].
- Patents Act 2013, ss 253–259.
- Xyleco, Inc [2019] NZIPOPAT 7 (23 April 2019), at [7] per Assistant Commissioner of Patents Victoria Casey QC.
- Resmed v Fisher & Paykel Healthcare, above n 1, at [11].
