IPONZ practice update on double patenting in New Zealand

• Law Firm: Spruson & Ferguson
• Subject Matter: Intellectual Property, Patent
• Author: Dr. Ken Johnstone and Brendan Nugent
• Published date: 06 March 2023

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.

Key points

• 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.

Relevant legislation

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...