We  recently reported on a decision of the New Zealand Patent Office (IPONZ) in Oracle  [2021] NZIPOPAT 5 which should bring about a significant relaxing of New Zealand's approach to double patenting, specifically in relation to divisional-parent claim overlap.1 A further decision by IPONZ in Ganymed Pharmaceuticals  [2021] NZIPOPAT 6 heralds even further double patenting relief for applicants/patentees.2 The pragmatic interpretation of the legislation by the Hearing Officer in these two decisions signifies a marked change in examination practice, such that:

  1. double patenting is only a barrier to acceptance of both a parent and its divisional where they contain claims having substantially the same scope (Oracle); and
  2. a double patenting objection can now be overcome by withdrawal of the accepted application or surrender of a patent granted thereon (Ganymed).

Double patenting provisions

For applications filed under the Patents Act 2013  (2013 Act),3 double patenting only applies to applications that are related as parent and divisional. In particular, current reg 82 of the Patents Regulations 2014 (2014 Regulations) requires, inter alia, that both a parent and its divisional cannot both be "accepted" where they contain claims for "substantially the same matter".4 Relevantly, from commencement of the 2013 Act until 5 April 2018, the 2014 Regulations provided that a divisional application could not be filed with the same claims as its parent.5

Previous IPONZ practice

Prior to the decision in Oracle, IPONZ generally refused to accept both a parent and its divisional where the claims of one fell wholly within the scope of the claims of the other. However, while the Oracle decision indicated that double patenting only arises where the parent and divisional application contain claims of substantially the same scope (as determined by a "double infringement" test), the Oracle decision was silent on IPONZ's strict literal interpretation of current reg 82 with respect to the term "accepted".

In particular, for the purposes of double patenting, IPONZ was previously concerned only with the claims at the time of acceptance. Accordingly, a double patenting objection could not be overcome by withdrawal of the accepted application or surrender of a patent granted thereon.

Ganymed decision

This decision concerned the refusal of a divisional application during examination because it claimed "substantially the same matter" as accepted in its granted parent patent. However, the Applicants contested the Examiner's position that the double patenting objection could not be overcome by surrendering the parent patent because it does not alter the claims as originally accepted.

The Hearing Officer found that surrender of the parent patent was sufficient to overcome the double patenting objection because either:6

  1. the divisional was filed before current reg 82 came into force, and therefore surrender of the parent patent resolves the double patenting objection; or
  2. in the event that current reg 82 applies retroactively, the plain text in conjunction with the purpose of the amendment to reg 82 indicates that surrender of the parent patent should be taken into account.

The Hearing Officer was of the view that interpretation (1) applied because there was no clear direction that current reg 82 should apply retroactively and that to change the ground under an applicant's feet part way through prosecution would be unjust. In any case, the Hearing Officer rather helpfully discussed interpretation (2) in some detail, finding that there was nothing in the 2013 Act, the 2014 Regulations or any extrinsic materials to support the Examiner's position, nor would it be consistent with the purpose or overall scheme of the 2013 Act or the 2018 amendments to adopt the Examiner's interpretation.

Key takeaways

In relation to double patenting in New Zealand, key takeaways from Oracle and Ganymed  are as follows:

  • double patenting is only a barrier to acceptance of both a parent and its divisional where they contain claims having substantially the same scope;
  • divisional-parent claim overlap and claims of a divisional application that fall wholly within the scope of the scope of its accepted parent (and vice versa) are permitted; and
  • a double patenting objection in relation to a divisional application made under reg 82 can be overcome by amendment or withdrawal of the accepted parent application or surrender of a patent granted thereon (and vice versa).

Footnotes

1 Oracle International Corporation  [2021] NZIPOPAT 5

2 Ganymed Pharmaceuticals GmbH and TRON-Translationale Onkologie an der Universitätsmedizin der Johannes Gutenberg-Universität Mainz Gemeinnützige GmbH [2021] NZIPOPAT 6

3 Applications having an effective filing date on or after 13 September 2014

4 Patents Regulations 2014, reg 82(b) and (c)

5 Patents Regulations 2014, reg 52(3)

6 Ganymed Pharmaceuticals  at [9] or [10]

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.