The Intellectual Property Office of New Zealand (IPONZ) has recently updated the double patenting section of its Patent Examination Manual (“Examination Manual”). You can see an updated section of the manual here – Regulation 82: Parent and divisional claims “for substantially the same matter” | Intellectual Property Office of New Zealand (iponz.govt.nz). The update represents a significant softening of IPONZ’s approach to double patenting and harmonises its practice with recent Patent Office decisions.
- With the IPONZ practice changes, double patenting should only arise when claims have substantially the same scope as one or more accepted claims in a family; similar to the situation in Australia.
- Double patenting can also be avoided by withdrawing the earlier accepted application, surrendering the earlier granted patent, or amending the claims of the earlier accepted application or granted patent.
- Double patenting is not limited to claims having a direct divisional-parent relationship (the claims of an application will be compared to the accepted claims of any application or patent within a chain of divisional filings in New Zealand).
- Construction of claims may be problematic as it seems from the Examples in the updated Examination Manual that IPONZ might choose to interpret different claim terms as being of the same scope, which could require the applicant to demonstrate a practical difference between the terms.
Double patenting is precluded under Regulation 82, subsections (b) and (c) of the Patents Regulations 2014, which prevent the Commissioner from accepting a divisional application that includes a claim or claims to substantially the same matter as accepted in its parent application and vice versa.
IPONZ’s former approach to double patenting
IPONZ had previously adopted a fairly strict interpretation of Regulation 82, raising double patenting objections against divisional-parent claim overlap in cases where the claims of the divisional application were narrower than those in the parent, whenever a claim was wholly within the scope of a claim accepted on the parent. Equally, if the claims of the divisional application were broader than the claims accepted on the parent, an objection would be taken whenever a claim wholly encompassed the subject matter of a claim of its accepted parent application.
IPONZ had also previously taken the position that amendment or withdrawal of an earlier accepted application (or surrender of a granted patent) would not allow a double patenting objection against related applications under active prosecution to be overcome.
Patent Office decisions
There have been two recent New Zealand Patent Office decisions each relating to different aspects of double patenting.
In Oracle International Corporation  NZIPOPAT 5 (“Oracle”), the Deputy Commissioner determined that Regulation 82 prevents a divisional application from being accepted with one or more claims having substantially the same scope as one or more claims of its accepted parent application (and vice versa), even if the phrasing, terminology and/or ordering of the clauses in the respective claims is not identical.
In Ganymed Pharmaceuticals GmbH et al.  NZIPOPAT 6 (“Ganymed”), the Deputy Commissioner determined that a double patenting objection against a divisional application with substantially identical claims to its accepted parent application (or granted patent) can be overcome by withdrawing the parent application (or surrendering the parent patent).
Updated IPONZ practice
Although the Examination Manual was updated not long after the decisions in Oracle and Ganymed, in particular to reflect that a double patenting objection can be overcome by withdrawing the earlier accepted application, surrendering the earlier granted patent, or amending the claims of the earlier accepted application or granted patent, the Patent Office had maintained its strict interpretation of Regulation 82 with respect to divisional-parent claim overlap until the recent change to the Examination Manual.
The updated Examination Manual now harmonises the assessment of divisional-parent claim overlap under Regulation 82 with the decision in Oracle, in that it is only if one or more claims of a divisional application have substantially the same scope as one or more claims of its accepted parent application (or vice versa) that a double patenting objection should be raised.
In other words, claims that are wholly within the scope, or wholly encompass the scope of a related accepted application (but do not have substantially the same scope) should not be objected against under Regulation 82.
The test for the allowability of parent-claim overlap in the updated Examination Manual is the “double infringement” test described in Oracle:
- Would an infringement of the claim(s) of the first application also be an infringement of the claim(s) of the second?
- And would an infringement of the claim(s) of the second application also be an infringement of the claim(s) of the first?
If the answer to both questions is yes, then the claims are considered to be “for substantially the same matter” and prohibited overlap is present.
The updated Examination Manual further clarifies that the test is for all infringing embodiments that fall within the scope of the claim (rather than just a single embodiment), such that if there is any embodiment that would infringe one claim, but not the other, then the claims would fail the double infringement test (and therefore avoid a double patenting objection).
The updated Examination Manual also states that although Regulation 82 only specifically refers to the relationship between a parent and divisional application, in view of its intended purpose, “to prevent two or more patents being granted for the same invention”, IPONZ considers that Regulation 82 is applicable to any application within the “same divisional patent family”. That is, IPONZ will assess, for example, any grandparent, parent, sibling and/or child applications of the application under examination when considering double patenting; not just applications having a direct parent-divisional relationship.
The revised Examination Manual give examples which suggest that IPONZ’s construction of claims may be problematic if they choose to interpret different claim terms as having the same scope. For example, in one example the terms “camera configured to capture a two-dimensional image” and “imaging means that captures a 2D image” are considered equivalent. If such an example were raised in a double patenting objection, this may require the applicant to demonstrate a practical difference between the terms. In this example, an applicant may need to satisfy IPONZ that there are imaging means that capture a 2D image which do not fall within the scope of the term “camera” (assuming that such possibilities exist) in order to address a double patenting objection.
Despite our concerns regarding claim construction, this shift in IPONZ practice will be good news for New Zealand applicants as it should mean that double patenting objections arise less frequently and will be easier to overcome.
 Oracle International Corporation  NZIPOPAT 5 -.
 Ganymed Pharmaceuticals GmbH and TRON-Translationale Onkologie an der Universitätsmedizin der Johannes Gutenberg-Universität Mainz Gemeinnützige GmbH  NZIPOPAT 6.
 Ganymed .