In good news for New Zealand patent applicants, the Patent Office (IPONZ) has issued a decision rejecting invocation of the law on patentable subject matter by an Examiner to support a double patenting objection in Taiho Pharmaceutical Co., Ltd. [2022] NZIPOPAT 1. In reaching that decision, the Assistant Commissioner appeared to endorse the notional "double infringement" test for double patenting we optimistically discussed in our previous article.

Double patenting

The only express prohibition on double patenting under New Zealand law relates to the acceptance of both a divisional application and its parent application where they contain claims directed to "substantially the same matter".1 However, the Taiho decision concerned claims in a pending application that overlapped in scope with another Taiho patent having the same priority date and international filing date, but where the application and patent were not related as parent and divisional. The Examiner sought to refuse the pending application (itself a divisional of an abandoned parent application) on the basis of double patenting, but relying on a ground that relates to patentable subject matter.

Patentable subject matter

The Examiner raised the double patenting objection on the basis that the claims of the pending application are "not for a manner of manufacture within the meaning of section 6 of the Statute of Monopolies" under s 14(a) of the Patents Act 2013 (the Act). In that regard, the Statute of Monopolies includes certain provisos that a patent should not be granted, inter alia, where it would be "mischievous to the State" or "generally inconvenient".

The rationale for prohibiting double patenting was described by early UK authorities as a public inconvenience because it could "cause confusion in matters which ought to be as clear as possible".2 However, in a previous decision by IPONZ relating to patentable subject matter (which was notably issued after the Examiner raised the double patenting objection against Taiho's application) the Assistant Commissioner stated:3

". s 14(a) does not recite "section 6 of the Statute of Monopolies" but rather, very specifically: "manner of manufacture within the meaning of section 6 of the Statute of Monopolies". Consequently the provisos from s 6 of the Statute of Monopolies are not part of and have no force under the Act and should not be raised in proceedings taken under the Act". [emphasis added]

In view of that decision, the Assistant Commissioner found there was no basis under New Zealand law for a double patenting objection in Taiho, drawing a clear line between the concepts of patentable subject matter and double patenting under New Zealand law.

"Double infringement" test

Despite finding that the issue of double patenting did not arise in Taiho, the Assistant Commissioner nonetheless considered whether the claims of the application and the patent at issue were for substantially the same matter. The claims were found to overlap in some respects but ultimately differed in scope and, as such, were not considered to be directed to substantially the same matter.

Helpfully, the Assistant Commissioner went on to articulate the relevant question as: "Taking a broader view, does the claim of [the patent] and [the pending application] fall wholly within the scope of each other?" [emphasis added].4 The clear implication is that a double patenting objection could not have been made out even if the application and patent were related as divisional and parent because what would infringe a claim of one would not necessarily infringe a claim of the other.

Key takeaways

The Taiho decision signifies that IPONZ does not intend to shoehorn a prohibition on double patenting into New Zealand law under the patentable subject matter provisions of the Act. Further, the decision provides a clear endorsement of a notional "double infringement" test in assessing parent/divisional double patenting.

However, while IPONZ has recently relaxed its position on double patenting (see another of our previous articles), this is unlikely to be the last we hear on the issue. Minutes from a meeting of the IPONZ Patent Technical Focus group in December 2021 noted that the IP Laws Amendment Bill exposure draft, which is slated to become open for public consultation in the second quarter of 2022, may also shape practice in this area. Stay tuned for further updates in relation to the Bill.


1. Patents Regulations 2014, regulation 82

2. Dreyfus' Application (1927) 44 RPC 291; endorsed by IPONZ in Abbott Laboratories [2003] NZIPOPAT 16

3. Thomson Reuters Enterprise Centre GmbH [2020] NZIPOPAT 7 at [51]

4. Taiho Pharmaceutical Co., Ltd. [2022] NZIPOPAT 1 at [192]

Originally published 22 February 2022

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