Subject Matter

IPONZ Draws Clear Line Between Patentable Subject Matter And Double Patenting – Intellectual Property


New Zealand:

IPONZ Draws Clear Line Between Patentable Subject Matter And Double Patenting


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In good news for New Zealand patent applicants, the Patent
Office (IPONZ) has issued a decision
rejecting invocation of the law on patentable subject matter by an
Examiner to support a double patenting objection in Taiho
Pharmaceutical Co., Ltd.
[2022] NZIPOPAT 1. In reaching that decision,
the Assistant Commissioner appeared to endorse the notional
“double infringement” test for double patenting we
optimistically discussed in our previous article.

Double patenting

The only express prohibition on double patenting under New
Zealand law relates to the acceptance of both a divisional
application and its parent application where they contain claims
directed to “substantially the same matter”.1
However, the Taiho decision concerned claims in a pending
application that overlapped in scope with another Taiho patent
having the same priority date and international filing date, but
where the application and patent were not related as parent
and divisional. The Examiner sought to refuse the pending
application (itself a divisional of an abandoned parent
application) on the basis of double patenting, but relying on a
ground that relates to patentable subject matter.

Patentable subject matter

The Examiner raised the double patenting objection on the basis
that the claims of the pending application are “not for a
manner of manufacture within the meaning of section 6 of the
Statute of Monopolies” under s 14(a) of the Patents Act
2013
(the Act). In that regard, the
Statute of Monopolies includes certain provisos that a patent
should not be granted, inter alia, where it would be
“mischievous to the State” or “generally
inconvenient”.

The rationale for prohibiting double patenting was described by
early UK authorities as a public inconvenience because it could
“cause confusion in matters which ought to be as clear as
possible”.2 However, in a previous decision by
IPONZ relating to patentable subject matter (which was notably
issued after the Examiner raised the double patenting objection
against Taiho’s application) the Assistant Commissioner
stated:3

“. s 14(a) does not recite “section 6 of the
Statute of Monopolies” but rather, very specifically:
“manner of manufacture within the meaning of section 6 of the
Statute of Monopolies”. Consequently the provisos from s 6
of the Statute of Monopolies are not part of and have no force
under the Act
and should not be raised in proceedings taken
under the Act”.
[emphasis added]

In view of that decision, the Assistant Commissioner found there
was no basis under New Zealand law for a double patenting objection
in Taiho, drawing a clear line between the concepts of
patentable subject matter and double patenting under New Zealand
law.

“Double infringement” test

Despite finding that the issue of double patenting did not arise
in Taiho, the Assistant Commissioner nonetheless
considered whether the claims of the application and the patent at
issue were for substantially the same matter. The claims were found
to overlap in some respects but ultimately differed in scope and,
as such, were not considered to be directed to substantially the
same matter.

Helpfully, the Assistant Commissioner went on to articulate the
relevant question as: “Taking a broader view, does the
claim of [the patent] and [the pending application] fall wholly
within the scope of each other
?”
[emphasis
added].4 The clear implication is that a double
patenting objection could not have been made out even if the
application and patent were related as divisional and parent
because what would infringe a claim of one would not necessarily
infringe a claim of the other.

Key takeaways

The Taiho decision signifies that IPONZ does not intend
to shoehorn a prohibition on double patenting into New Zealand law
under the patentable subject matter provisions of the Act. Further,
the decision provides a clear endorsement of a notional
“double infringement” test in assessing parent/divisional
double patenting.

However, while IPONZ has recently relaxed its position on double
patenting (see another of our previous articles), this is unlikely to be the
last we hear on the issue. Minutes from a meeting of the IPONZ Patent
Technical Focus group in December 2021 noted that the IP Laws Amendment Bill exposure
draft
, which is slated to become open for public consultation
in the second quarter of 2022, may also shape practice in this
area. Stay tuned for further updates in relation to the Bill.

Footnotes

1. Patents Regulations 2014,
regulation 82

2. Dreyfus’ Application
(1927) 44 RPC 291; endorsed by IPONZ in Abbott
Laboratories
[2003] NZIPOPAT 16

3. Thomson Reuters Enterprise Centre
GmbH
[2020] NZIPOPAT 7 at [51]

4. Taiho Pharmaceutical Co.,
Ltd.
[2022] NZIPOPAT 1 at [192]

Originally published 22 February 2022

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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