New Zealand: Oracle Foreshadows Double Patenting Relief In New Zealand

The New Zealand Patent Office (IPONZ) has traditionally applied a hardline approach to double patenting, particularly in relation to parent-divisional claim overlap. However, IPONZ has now issued its first decision on double patenting under the 2013 Act in Oracle International Corporation [2021] NZIPOPAT 5 (Oracle), heralding a relaxing of the approach to the assessment of double patenting. As a result of this decision, it is likely that IPONZ will only raise double patenting objections where a claim in a divisional has substantially the same scope as a claim in its parent.

Relevant provisions

For applications filed under the 2013 Act, i.e., having an effective filing date on or after 13 September 2014, the Commissioner must not accept a divisional application where it includes one or more claims for "substantially the same matter" as accepted in the parent, and vice versa.¹

While an improvement on the original 2013 Act provisions, which prohibited a divisional application from being filed with the same claims as its parent, the current prohibition on double acceptance is still out of step with other jurisdictions, including Australia, the U.S. and Europe. It also means that it is not possible to overcome a double patenting objection by withdrawing the accepted application or surrendering a patent granted thereon. However, amendment of either the parent or divisional to exclude the claimed subject of the other is generally permitted.

Under the previous Patents Act 1953 (1953 Act) which still applies to a limited number of applications having an effective filing date before 13 September 2014, the Commissioner has discretionary power to require amendment to ensure that a parent and its divisional do not include a claim for matter claimed in the other.² In practice, this discretionary power is applied as a matter of routine to provide a blanket exclusion on most forms of divisional-parent claim overlap.³

Divisional-parent claim overlap

Since the introduction of the "double acceptance" prohibition into the 2013 Act, IPONZ has taken a fairly lenient approach to divisional-parent claim overlap. According to the IPONZ Patent Examination Manual (Manual), even very small differences between the two claims is sufficient to avoid a double patenting objection, provided that those differences are not "trivial, irrelevant or inconsequential".

However, before Oracle, where the pending claims of a divisional fell wholly within the scope of the claims of its accepted parent (or vice versa), those claims could not be accepted. According to the Manual, an exception may have been afforded in circumstances where one application is accepted with claims covering broad Markush groupings and the other seeks to claim a very small subset of these compounds, i.e., where it is impractical or impossible to re-draft the broader Markush-type claim so as to exclude the narrowly claimed subject matter.

What constitutes "substantially the same matter"?

In Oracle, the Delegate was concerned with whether the claims of a pending divisional application were for substantially the same matter as the accepted claims of its parent. The claims of each application, directed to optical tape drive system and method for writing data to optical tape with an optical tape drive system, were written in similar but not identical terms. According to the Delegate, when the ordinary rules of claim construction are applied:

The questions asked by the Delegate in Oracle were whether (a) the notional infringement of the divisional claims would necessarily constitute infringement of the parent claims (as accepted) and (b) whether the notional infringement of the parent claims would necessarily constitute infringement of the divisional claims. As both of these questions were ultimately answered in the affirmative for all independent claims, the claims of the divisional were found to be for substantially the same matter as the parent and therefore could not be accepted.

Application of this notional "double infringement" test suggests a significant relaxing of the approach to the assessment of double patenting in New Zealand. While not expressly stated in the Oracle decision, the implication is that it will no longer be a barrier to acceptance of both a divisional and its parent application where the claims of one fall wholly within the scope of the (broader) claims of the other. While this is currently inconsistent with the guidance provided in the Manual (written before the Oracle decision was issued), we expect this to be updated in the near future.

Comparison to Australia

In Australia, a patent cannot be granted on an application having the same inventor(s) and priority date(s) as a granted patent where it claims the same invention.⁴ Essentially, double patenting only arises in Australia where the relevant claims have identical scope. As in New Zealand, this does not necessarily mean that the wording of the claims must be the same. Rather, the relevant question asked by the Patent Office is whether "if the claims of the two specifications were located in the same specification, would there be redundancy of claiming?"⁵

The notional "double infringement" approach adopted by the Delegate in Oracle is similar to the "redundancy of claiming" approach taken by the Australian Patent Office. However, unlike in Australia, the double patenting provisions of the 2013 Act refer specifically to applications that are related as parent and divisional. The case of applications having the same inventor(s) and priority date(s) but which are not related as parent and divisional is not specifically dealt with under New Zealand law. Therefore, arguably, there is no limitation on double patenting in such cases, including in the case of "sibling" divisional applications derived from a common parent.

Key takeaways

In view of the Oracle decision, we expect IPONZ will adopt the following approach moving forward:

• A parent and its divisional application cannot both be accepted where they contain claims having substantially the same scope as determined by a notional "double infringement" test;
• Divisional-parent claim overlap continues to be permissible, provided that any difference is not trivial, irrelevant or inconsequential; and
• It is no longer a barrier to acceptance of both a divisional and its parent application where the claims of one fall wholly within the scope of the (broader) claims of the other.

Footnotes

1 Patents Regulations 2014, reg 82(b) and (c)
2 Patents Regulations 1954, reg 23(2)
3 A notable exception arose in Whitehead Institute for Biomedical Research et al [2009] NZIPOPAT 21 in which the Delegate considered that re-drafting the claims of the parent to exclude the subject matter claimed in the divisional would be onerous, result in a large number of separate claims and risked introducing ambiguity into the claims.
4 Patents Act 1990 (Cth), s 64
5 Smith Kline Beecham p.l.c.'s Application [2000] APO 54

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