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.
- 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. Read more