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Lowering the Bar for Double Patenting issues in New Zealand
New Zealand has long had a rather complex system of grounds under which double patenting issues were raised. However developments over the last 10 years may have steadily narrowed the scope of these grounds, at least so far as applications and patents made by the same applicant are concerned. A look at the timeline shows a clear trend, whether deliberate or otherwise, towards a more liberal approach to applicants with two or more applications to the same or similar subject matter.
Double patenting grounds in New Zealand have included prior claiming, section 8(2) prior art (‘whole of contents approach’), Dreyfus’ situations, and parent/divisional overlap.
Prior Claiming
Section 14 of the ‘old’ Patents Act 1953 allowed for an objection to be raised where the invention claimed in the application in question had already been claimed in a claim another New Zealand application published on or after the filing date but having an earlier priority date. Section 14 was repealed by the enactment of the Patents Act 2013 and replaced by section 8(2) of the Patent Act 2013, a so called ‘whole contents’ provision. More on this below.
Section 8(2) Whole of Contents Novelty
Under section 8(2) of the Patents Act 2013, information in a complete specification which became open to public inspection after the priority date of the claim but is entitled to an earlier priority date can be prior art for the purposes of novelty (but not inventive step). This approach is similar to that taken in other jurisdiction such as Europe and Australia.
One notable difference from section 14 of the 1953 Act is that section 8(2) applies to information contained in a New Zealand application, or in a published PCT application, whether or not the PCT application has entered national phase in New Zealand (see The Viking Corporation [2022] NZIPOPAT 4) .
Much like section 14, section 8(2) originally applied whether the applicant was the same or different. However as part of New Zealand’s accession to the CPTPP Agreement, on 30 December 2018, section 9(f) was introduced into the Patents Act 2013. This section introduced a general grace period allowing for matter to be disregarded if a disclosure was made by the applicant or with their consent during a one year period prior to the filing date.
The relevance of this provision to the ‘whole of contents’ provision section 8(2) has yet to be determined, but on its face there is no reason why patent disclosures should be excluded from the grace period. This suggests that, where an application has the same applicant (or shares an applicant) and it is published during the 12 months prior to filing date of the application, then it cannot be taken into account as prior art.
An interesting issue arises as to the treatment of applications made by the same applicant which? are published after the filing date of the application in question. In Australia it has been decided that such an application remains excluded from consideration for prior art purposes. It will be interesting to see how this is resolved in the context of the New Zealand statute.
Dreyfus’ Situation
The situation where the claims of two applications are entitled to the same priority date did not fall within the scope of section 14, nor does it fall within the scope of section 8(2) of the Patents Act 2013. However, in the case of Re: Dreyfus Application it was held that it was generally inconvenient to allow a single applicant to obtain two patents to the same subject matter. As such it was not considered to be a manner of manufacture within the meaning of section 6 of the Statute of Monopolies.
However in Thomson Reuters Enterprise Centre GmbH [2020] NZIPOPAT 7 and then later, specifically in relation to the Dreyfus’ situation in Taiho Pharmaceutical Co., Ltd. [2022] NZIPOPAT 1, the Assistant Commissioner of Patents held that the provisos to section 6 are not part of and have no force under the Patents Act 2013. Following these decisions, the Dreyfus’ situation is not a ground of objection under the Patents Act 2013.
Parent-Divisional Overlap
Under the Patents Act 1953, overlap between a parent and divisional application was objected to where a claim or claim in the divisional application fell wholly within the scope of the parent application (see for example WHITEHEAD INSTITUTE FOR BIOMEDICAL RESEARCH, MAX-PLANCK-GESELLSCHAFT ZUR FORDERUNG DER WISSENSCHAFTEN EV, MASSACHUSETTS INSTITUTE OF TECHNOLOGY and UNIVERSITY OF MASSACHUSETTS MEDICAL CENTER [2009] NZIPOPAT 21). This approach was initially carried over under similar provisions of the Patents Act 2013.
However, in Oracle International Corporation [2021] NZIPOPAT 5 the Assistant Commissioner applied a double infringement test:
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?
As noted in the IPONZ guidelines which were issued following this case:
“the double infringement test is therefore taken to mean “all infringing embodiments” that fall within the scope of the claim, not just any “single infringing embodiment”. If there are infringing embodiments within the scope of one claim which are not within the scope of the other claim, this will not meet both arms of the double infringement test.”
As a result, issues with parent-divisional overlap are limited primarily to cases where there is identity of claim scope, not mere overlap in scope.
Conclusion
Thus the extent to which an Applicant’s own other application can prejudice the grant of a patent on a different application has now been substantially narrowed.
It is far from clear that this has been the result of an intentional policy, either when the Patents Act 2013 was enacted or later. However, from a policy perspective the changes can perhaps be justified. Under the old Patents Act 1953, and in the early years of the Patents Act 2013, double patenting objections could take up substantial resources of both the applicant and examiner. On the other hand, the harm that allowing two patents to the same subject matter from the same patentee is substantially lessened by modern patent databases with clear linking between related applications and ease of searching by patentee name.
