Divisional applications can be filed voluntarily in both Australia and New Zealand and can be a useful way to protect multiple aspects of an invention or a preferred commercial embodiment. However, both jurisdictions have laws to prevent an applicant from claiming the same matter in a parent and divisional application (i.e. double patenting). The laws themselves and their interpretation are quite different for Australia and New Zealand, and therefore the strategy for claiming in parent and divisional applications will typically need to be different for each jurisdiction.
Relevant Legislation and Patent Office Practice
In Australia, double patenting is prevented by Section 64(2) (for standard patent applications) and 101B(2)(h) (for innovation patent applications) of the Australian Patents Act 1990. These sections specify that an application cannot be granted (if it is an application for a standard patent) or certified (if it is an application for an innovation patent) if it: “…claims an invention that is the same as an invention that is the subject of a patent made by the same inventor” and the relevant claim or claims in each of the respective specifications have the same priority date.
In practice, this means that an overlapping claim scope between a divisional and its parent is permitted. However, a patent cannot be granted (or certified in the case of innovation patents) if claiming identical subject matter (i.e. claims with identical scope) to one or more claims of a granted patent in the same family. A test that is typically applied asks “if the claims of the two specifications were located in the same specification, would there be redundancy of claiming?”; in effect asking whether there are claims of identical scope.
An examiner in Australia will generally consider this during examination of an application (if a related parent or divisional case is pending or has been granted) and will raise (or at least provisionally raise) a double patenting objection if appropriate.
In contrast to the provisions in New Zealand (outlined below), Section 2.18.2 of the Australian Patent Examiner's manual specifies that Examiners are to interpret the reference to a ‘patent' in Section 64(2) and Section 101B as meaning ‘a patent that is in force', and therefore an examiner is unlikely to raise a double patenting objection if the granted patent is not in force.
In New Zealand, double patenting is prevented by Regulation 82 of the New Zealand Patents Regulations 2014. This regulation specifies that in the case of a divisional application, it “…must not include a claim or claims for substantially the same matter as accepted in the parent application”. That is, if the parent application has been accepted (i.e. allowed), then the divisional application must not include 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.
In practice, this means that a parent and divisional application cannot both be accepted if each is claiming substantially the same matter in one or more claims. An examiner in New Zealand will generally consider this during examination of an application (if a parent or divisional case is pending or has been granted) and will raise a double patenting objection if appropriate.
The New Zealand Patent Examiner's manual states that an objection under Regulation 82 cannot be cured by withdrawing or surrendering the accepted application or granted patent. In other words, unlike Australia where for the purpose of assessing double patenting the Patent Office interprets a ‘patent' as having to be in force, for New Zealand the status of the patent/application is irrelevant (provided it has been accepted).
Although there is no case law with respect to the Regulation 82 provisions, the New Zealand legislation reflects the legislation in the UK, and accordingly the New Zealand Patent Office will generally take guidance from decisions based on section 18(5) or section 73(2) of the UK Patents Act 1977 when considering double patenting issues.
The New Zealand Patent Office has taken a broader interpretation of ‘substantially the same matter' as compared with the interpretation of ‘the same' in Australia, and has in some cases raised double patenting objections for any overlap in claim scope between a parent and divisional application (whether the claims have identical scope or not). This may be a carry-over from the previous 1953 New Zealand Patents Act provisions, which arguably had more restrictive language than the 2014 Act, and gave the Commissioner powers under Regulation 23(2) to require the amendment of either a parent or division specification “to ensure that neither of the said complete specifications includes a claim for matter claimed in the other”.
The New Zealand Patent Examiner's Manual was recently updated to include, inter alia, further details regarding how claim overlap between a parent and a divisional should be treated by examiners with respect to the Regulation 82 requirements, which hopefully will provide greater clarity and consistency with respect to the examination of double patenting in New Zealand.
We have summarised some of the different scenarios for the treatment of claim overlap between parent and divisional applications for New Zealand (based on the updated Examiner's Manual) as compared with the treatment of claim overlap for parent and divisional applications in Australia.
Claim Scope Overlap Scenarios – Double Patenting or Not?
In the scenarios discussed below, we assume that one of the two patent applications depicted has been granted (for Australia), or accepted (for New Zealand).
The New Zealand Patent Examination Manual gives an example of a parent case having a Markush structure with hundreds of thousands of compounds within its scope, and a divisional application claiming five specific compounds (that are within the scope of the parent Markush structure) as potentially being allowable, since in such a case it would not be practical or possible to “notionally sub-divide the Markush structure of the parent into notional alternatives” (i.e. to carve out the subject matter of the divisional from the parent).
Strategies to Avoid Double Patenting
Generally speaking, in Australia it is possible to obtain broader claims in a parent application and pursue narrower claims to preferred commercial embodiments in a divisional application. It is relatively straightforward to avoid double patenting by either ensuring that no claims in an application have identical scope as any claims of a granted patent in the family, or, if wishing to pursue such claims, by amending or surrendering (or allowing to lapse) the granted patent having one or more claims of identical scope.
For New Zealand, the situation can be trickier, since withdrawal or surrender of an accepted application or granted patent will not preclude a double patenting objection. That being said, there are a number of strategies which may be used to avoid double patenting in New Zealand, including the following.
Multiple ‘orphan' divisional filings
Since the double patenting provisions for New Zealand are only in respect of a divisional application when compared with its parent and vice versa, it is technically possible to file, from a single parent, multiple New Zealand divisional applications, which would not be subject to double patenting with respect to each other (but would be with respect to the parent).
If necessary, the parent application may be allowed to lapse, leaving the multiple divisional applications as ‘orphans' without an accepted parent to create any double patenting issues. This strategy may technically allow claims in multiple divisional applications (from a single non-accepted parent) to be accepted, even if having a claim which is wholly within the scope of one or more claims of a ‘sibling' case. That being said, we are not aware whether this strategy has been tested in New Zealand.
Broader but narrower claims
As discussed above, claims in a parent and divisional application that are partially overlapping in scope, but that each include some matter within their scope which is outside of the scope of all claims of the other application, may be allowable in New Zealand.
In view of this, it may be possible to introduce one feature which is broader in the claims of a first application and narrower in the claims of a second application (which is a parent or divisional of the first application), and a second feature which is narrower in the claims of the first application and broader in the claims of the second application (i.e. scenario 3) to avoid double patenting.
For example, a first application could have claims to a composition reciting a broad range of amount of a component A, and a narrow range of amount of a component B; and a second application with claims to a composition reciting a narrow range of amount of component A, and a broad range of amount of component B.
In this example, care must be taken to ensure that none of the dependent claims of the first application recite amounts of component A in a narrower range than recited in the claims of the second application, and that none of the dependent claims of the second application recite amounts of component B in a narrower range than recited in the claims of the first application, in order to prevent any claims of one application being wholly within the scope of the other.
This example may be contrasted with a parent and divisional application both having claims to a composition reciting the same range of the amount of component A, and a broader range of the amount of component B in the parent as compared with the divisional. In such a case, the New Zealand Patent Office would raise a double patenting objection, since the divisional application claims would be wholly within the scope of the parent claims (i.e. scenario 4).
Removing claim overlap
Another strategy to avoid a double patenting objection in New Zealand is to amend the claims of the parent and/or divisional application to remove any overlap in claim scope (i.e. scenario 1). For example, if claims of a divisional application may fall wholly within the scope of a parent application, it can be possible to introduce a disclaimer to the claims being pursued in the parent to exclude the subject matter of the divisional claims (e.g. disclaim specific compounds within a Markush structure). However, such a strategy would of course not be possible if the claims of the parent have already been accepted. Alternatively, where claims of a divisional partially overlaps with those accepted for a parent, the partial overlap may be removed through use of a disclaimer. In our experience, New Zealand Examiners have permitted the insertion of a disclaimer even if there is no explicit basis for such disclaimer in the specification.
Although double patenting objections can be more challenging to deal with in New Zealand compared with Australia, there are a number of different strategies which may be useful to overcome such objections. Issues of potential poisonous priority should also be taken into consideration when considering claims for parent and divisional applications for both Australia and New Zealand. Please contact us if you would like further information regarding double patenting in Australia and New Zealand, or would like us to provide suggestions for possible claim sets for parent and divisional applications to avoid double patenting.
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.