Applicants that file divisional applications in New Zealand are likely to face double patenting objections if their divisional applications claim subject matter that overlap with that of their parents. With this in mind, and seeing as we often receive enquiries relating to double patenting in New Zealand, I thought it would be worth providing you with a brief summary on double patenting and divisional practice in New Zealand and compare this to the practice in Australia.
New Zealand
Regulation 23 of the “old” Patents Regulations 1954, and Regulation 52 of the “new” Patents Regulations 2014, which regulate the filing of divisional applications in New Zealand, state that neither of the applications (i.e. the divisional and its parent) should include a claim or claims for (substantially the same) matter (as) claimed in the other application.
Current practice of the Intellectual Property Office of New Zealand (IPONZ) is for the examiners to raise an objection to any overlap between the subject matter of a parent claim set and that of a corresponding divisional claim set. Generally speaking, a divisional will be directed to a separate invention. However, it is acceptable to claim, for example, use of the invention claimed in the parent claim set (e.g. use of an antibody [claimed in the parent] in the manufacture of a medicament for treating a disease).
Usually, some degree of overlap is considered to be permissible so long as the public interest is served in not allowing re-monopolising the same invention claimed in the parent. However, the degree of overlap considered acceptable has not been clarified.
Although there is not much case law in this area, it is worth noting that there has been at least one IPONZ decision (Whitehead Institute for Biomedical Research et al. [2009] NZIPOPAT 21) where an amendment of the divisional was not required to remove overlap with matter claimed in the parent provided that the applicants inserted into each of the specifications references to the other as notice to the public regarding potential infringement of both patent cases (see paragraph 79). Nevertheless, a divisional claim falling wholly within the scope of a parent claim would not be acceptable (see paragraph 74).
General comments
If the examiner raises a double patenting objection, it may be possible for the applicant to amend the divisional application to exclude (“carve out”) subject matter (i.e. specific antibodies) already claimed in the parent. Alternatively, if (e.g. due to the nature of the claims) it is not possible to amend the claims of the divisional to exclude all the subject matter claimed in the parent, it may be possible to argue that the divisional claims should be allowable in view of the Whitehead Institute for Biomedical Research et al. [2009] decision mentioned above (see, e.g., paragraphs 14, 15 and 79). In this regard, I note that claims directed towards subject matter that is both broader in some aspects and narrower in other aspects than the claimed subject matter of a related (parent) application are generally allowable.
Depending on the specific circumstances, it may also be possible to:
(i) amend/restrict the claims of the divisional application to exclude (disclaim) subject matter already claimed in the parent;
(ii) amend/restrict the claims of the parent to exclude (disclaim) subject matter claimed in the divisional (e.g. disclaim specific antibodies or a specific medical use), bearing in mind that, following allowance, all post grant amendments are advertised and open to third party opposition;
(iii) combine the claims of a pending divisional with the claims of a granted parent in a single claim set and withdraw (abandon) the parent. Disadvantages with this action, however, include: (a) the claims are again subjected to substantive examination; (b) the application will be open to third party opposition; and (c) the applicant will not have an enforceable patent in place in case there is infringement.
Australia
Double patenting, i.e. the grant of two or more patents to the same inventor(s) having claims to the ‘same invention’, is prohibited by section 64(2) of the Patents Act 1990 (Cth).
Under Australian law, the test for whether the claims define the same invention is ‘if the claims of the two specifications were located in the same specification, would there be redundancy of claiming?’ (SmithKline Beecham p.l.c. [2000] APO 54). That is, whether there are claims of identical scope. However, the requirement for ‘identical scope’ does not necessarily impose a requirement for identical wording; it is the overall scope of each of the claims that is considered and it has been stated that ‘if the differences in wording of the claims are inconsequential, the two sets of claims may nevertheless relate to the same invention’ (Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302). In SmithKline Beecham p.l.c. [2000] APO 54, it was also held that ‘any situation giving rise to an objection under section 64(2) must be so plainly evident that it is beyond reasonable argument’.
Thus, unless the claims are of identical scope (and/or the differences in wording of the claims are inconsequential), Australian applicants should not face any double-patenting issues.