Wednesday, December 6 2023   \  Published by Henry Hughes .

Lowering the Bar for Double Patenting issues in New Zealand

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 Section 14 was repealed by the enactment of the Patents Act 2013 and replaced by section 8(2) of the Patent Act 2013, a so called ‘whole contents’ provision.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. Read more

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