The law – regulation 82

In New Zealand, a divisional application must not be accepted that includes a claim or claims “for substantially the same matter as accepted in the parent application” and vice versa in the case of a parent application where a divisional application has been accepted first.

Double patenting objections have routinely been raised if a claim in the divisional application falls wholly within the scope of (i.e. wholly encompassed), or is substantially identical to, a claim accepted in the parent application.

IPONZ has clarified in its updated guidelines that it considers the double patenting provisions apply to any application that is linked by a divisional chain back to a single New Zealand parent application. This includes grandparent, parent, sibling and child applications of the application under examination.

What is “substantially the same matter”?

In Oracle International Corporation [2021] NZIPOPAT 5 (Oracle), a parent and divisional application were found to be directed to substantially the same matter if they have “substantially the same scope”, even if the phrasing, terminology and/or ordering of claims under consideration is not identical.

A “double infringement” test was then applied to determine if claims of the parent and divisional application were substantially the same scope, where a notional infringement of the claims of a parent application must also necessarily infringe the claims of a divisional application, and vice versa, for a double patenting objection to apply.

Applying Oracle, where the scope of the parent and divisional application claims overlap but also include distinctly different subject matter (i.e. partial overlap) then such “double infringement” will not necessarily occur and is permissible. Similarly, for a wholly encompassed claim between a parent and divisional, infringement of a broader claim would not necessarily infringe the narrower wholly encompassed claim, meaning the claims would not have the same scope and therefore is not directed to “substantially the same matter”. Despite this decision, and until this welcomed practice update, IPONZ initially adopted a more restrictive interpretation of Oracle with respect to divisional-parent claim overlap.

The updated Examination Manual now fully endorses the approach to double patenting in Oracle in allowing substantially non-identical claims, including overlapping and wholly encompassed claims, between parent and divisional applications.

Double patenting can be overcome by surrendering or amending earlier accepted application

Until recently, a double patenting objection could not be cured by surrendering or amending the earlier accepted application or granted patent. This was based on a recent change to IPONZ’s practice that the subsequent fate of the first accepted application was not considered relevant. In other words, the accepted claims permanently set in place the claims for assessment of double patenting.

In Ganymed Pharmaceuticals GMBH et al. [2021] NZIPOPAT 6 (Ganymed), this position was overturned and it was held that the double patenting provisions do not exclude consideration of post-acceptance changes to the parent application by way of surrender or post-acceptance amendments. Surrendering or amending the earlier application or patent can now overcome a double patenting objection.

A welcome shift in policy

Until now, New Zealand’s strict stance on double patenting often had the detrimental result that an applicant did not receive patent protection for certain alternative embodiments of their invention. Despite the fact they had genuinely sought protection for and had committed to publishing through the patent system. New Zealand has been a global outlier in its strictness on double patenting. This is in contrast to most other countries. Therefore, this practice update and significant relaxing in strictness to align more with the international approach and major overseas jurisdictions is welcomed.

Key points

Following this practice update and in line with Oracle and Ganymed, New Zealand’s double patenting provisions will now essentially align with Australia, namely:

  • A double patenting objection can be overcome by providing a persuasive response, amending the claims of either the parent or divisional application, or by surrendering the earlier accepted application or patent granted thereon.
  • Substantially non-identical claims, including overlapping and wholly encompassed claims, between parent and divisional applications will not trigger a double patenting objection.