Double patenting has been seen as a significant issue in New Zealand patent law ever since the introduction of the Patents Act 2013 – and with it, the removal of any discretion on the part of an examiner. A recent decision of the Intellectual Property Office of New Zealand (IPONZ) confirms what we had expected all along: double patenting is to be interpreted strictly, but as a matter considered during examination/pendency, it should generally be curable.

The divisional, the parent, the decision

New Zealand patent application 739526, in the name of Oracle International Corporation, was the subject of recent IPONZ decision [2021] NZIPOPAT 5 (9 June 2021). The '521 application is a divisional of granted New Zealand patent 705138. The pending claims of NZ'526 stood rejected under Reg.82(b) of the Patents Regulations 2014 for claiming "substantially the same matter as accepted in the parent application". The rejection was made for the first time in the 4th examination report, and following receipt of the 5th examination report in which the examiner's position was maintained, the Applicant requested to be heard. Outside of regular examination, this decision is IPONZ' first look at the application of Reg.82.

The legislation says "must not"

Reg.82(b) provides that "in the case of a divisional application, if the Commissioner has accepted the complete specification relating to a parent application, that the divisional application must not include a claim or claims for substantially the same matter as accepted in the parent application". In contrast to the equivalent provision (Reg.23(2)) of the abolished Patents Regulations 1954, Reg.82(b) does not allow for the exercise of any discretion on the part of an examiner, meaning that "substantially the same subject matter" must be considered objectively and "must not" need be applied.

The claims suggest "probably not"

Granted parent NZ'138 comprises two independent claims 1 (to "an optical tape drive system") and 11 (to "a method for writing data to an optical tape with an optical tape drive system having n total optical pickup units each having a same fixed unit data rate"). Pending divisional NZ'526 comprises independent claims 1 and 16, having the same respective preambles. Beyond that, as drawn out in the decision and discussed below, the parent and divisional claims were similar enough on their face to warrant close scrutiny.

The Delegate says "definitely not"

In his analysis, the Delegate considered whether a system infringing claim 1 of NZ'138 would also infringe claim 1 of NZ'526 (if granted) – and concluded "yes". He then did the same in reverse and reached the same conclusion. He performed the same analysis on the respective method claims 11 and 16 – again concluding "yes" and "yes".

The decision helpfully breaks down each claim into its respective integers and transposes them side-by-side in order to highlight the differences (or rather, similarities), presumably inviting the reader to reach their own conclusions. That said, as a couple of chemists, we're more than happy to abide with the Delegate's analysis: Claims 1 and 16 of NZ'526 fall foul of Reg.82(b) insofar as they claim "substantially the same subject matter" as the respective claims 1 and 11 of NZ'138.

At paragraphs 39-41 of the decision, the Delegate provided some general comments. Firstly, as suggested in the "must not" wording of Reg.82(b), there is no discretion on the part of the Commissioner. Secondly – and logically – a claim substantially identical in phrasing and terminology to an accepted claim falls foul of the regulation. And thirdly, where the phrasing, terminology or order of claims is different, they must still be rejected under Reg.82(b) if a skilled person would construe them to be of substantially the same scope.

Unsurprisingly, the decision upheld the examiner's finding. The Applicant was afforded a short extension of time within which to address the rejection. Following rather extensive amendments to claims 1 and 16, the case was subsequently allowed and was published on 25 June 2021 – less than three weeks after the rejection decision. All's well that ends well.

We say "there's nothing to see here"

Double patenting and New Zealand actually have a quite awkward recent history. When the Patents Regulations 2014 were first published, Reg.52(3) was drafted in a way that suggested (in an extreme and somewhat paranoid interpretation) that a divisional filed with "a claim or claims for substantially the same subject matter as claimed in the parent application" would be dead on arrival as it was not received by IPONZ in the "proper form" (Reg.19). This was corrected fairly swiftly, to IPONZ' significant credit – and double patenting was confirmed as an acceptance issue.

Fast forward to the current decision and despite a little bit of a buzz around the traps, we don't see the problem with it. There was an obvious policy decision made in enacting Reg.82, which removed an examiner's discretion – and so what's an examiner supposed to do when confronted with not one, but two claims that were essentially doppelgangers (at least to these untrained eyes)? The bottom line is that the Applicant was afforded an opportunity to amend around the rejection, did so, and obtained an allowance. Surely that's a win-win.

As one final point – and this is a question I'm asked fairly regularly by foreign (particularly US) clients, double patenting is not a ground for opposition or revocation under New Zealand patent law. If the examiner misses it, makes a mistake and allows a divisional claiming substantially the same subject matter, then the Applicant chalks up a small "win" – both patents stand (subject to third party challenges on actual grounds of opposition or revocation). However, because a missed (and clear) double patenting situation ultimately amounts to a black eye on the part of IPONZ, one suspects they'll remain fairly liberal in their Reg.82(b) rejections.

Double patenting in AU and NZ – mind the gap

Another question often posed is whether there's any difference to double patenting across the two jurisdictions we service – Australia and New Zealand. The answer is they're very similar – but with one significant distinction.

In Australia, in addition to amendment, a double patenting rejection can be overcome by withdrawing the parent application or surrendering (allowing to lapse) the granted patent. Strategically, this allows an Applicant to pursue broader (but still overlapping) subject matter in a divisional. Once the parent is no longer alive, the rejection disappears.

However, in New Zealand, withdrawal or surrender of a parent application or granted patent – at least, as a means of addressing a double patenting rejection, is not possible. The wording of Reg.82 does not reference the status of the parent, thereby blocking this strategic pathway and making double patenting in New Zealand a slightly more difficult proposition than it is in Australia.

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