A win for patentees 2 min read
A recent decision of the Assistant Commissioner of Patents at the Intellectual Property Office of New Zealand (IPONZ) is a win for patentees.
The Assistant Commissioner confirmed that a double patenting objection against a divisional application and parent patent can be overcome by surrendering or amending the accepted parent application or granted parent patent.
- Double patenting occurs when there are two granted patents for the same invention. This is prohibited in most jurisdictions, including New Zealand, Australia and the UK.
- In New Zealand, it is now possible to overcome a double patenting objection by surrendering the parent patent, or by amending the claims of either the parent patent or the divisional application.
Patent attorneys and in-house counsel.
Regulation 82 of the New Zealand Patent Regulations 2014 prohibits the practice of double patenting. This prohibition stems from the policy position that it is undesirable to have two patents granted for the same invention. These issues were highlighted in the early UK decision of Dreyfus Application (1927) 44 RPC 291 where it was said that double patenting could lead to confusion and public inconvenience by granting a monopoly in the same invention twice. This prohibition on double patenting has also been reflected in Australia under s 64(2) of the Patents Act 1990 (Cth) and by Justice Emmett in Arbitron Inc v Telecontrol AG (2010) 86 IPR 110, where it was said that if there were no restrictions on double patenting, a patentee would be able to engage in double licensing.
Ganymed Pharmaceuticals  NZIPOPAT 6 concerned a decision of IPONZ in which it refused to accept a divisional patent application on the basis that the claims in the divisional application (the 493 application) were the same or substantially the same as those of the parent patent (the 280 patent). The applicant (Ganymed) argued that the double patenting issue could be overcome by surrendering the 280 patent. IPONZ was of the opposite view and firmly contended that surrender of 280 patent was unable to resolve the double patenting problem.
The Assistant Commissioner found that surrendering the 280 patent was sufficient to overcome the double patenting objection for the following two reasons:
- The 493 application was filed before regulation 82 came into force. It was reasonable for Ganymed to expect that the 493 application would be examined on the basis of the law at the time it was filed. Under the now repealed law, Ganymed successfully overcame a previous double patenting issue by surrendering the parent patent. In order to be consistent with the interpretation of IPONZ under the previous law, Ganymed could surrender the 280 patent for the acceptance of the 493 application.
- In the event that the Assistant Commissioner's first conclusion was wrong, he also went on to consider whether the 280 patent could be surrendered under the current regulation 82. The Assistant Commissioner commented that while this case concerned the surrender of a patent, the approach could be applied to post-acceptance amendments as well. This approach was reflected in the plain and intended reading of regulation 82. The Assistant Commissioner went on to conclude that regulation 82 did not exclude consideration of post-acceptance changes to the parent application by way of surrender of the patent. This conclusion turned on the interpretation of the term 'accepted' within regulation 82, as well as the general scheme of the Patents Act 2013, the Patents Regulations 2014 and the Patents Amendment Regulations 2018.