5.6.9.10 Double patenting, Multiple Applications - s64(2), s101B(2)(h)

Date Published

Introduction

The effect of a patent is to give the patentee an exclusive right in respect of the invention (s13). Accordingly, the grant of multiple patents for the same invention would conflict with the nature of the rights provided by a patent.

The Act contains specific provisions relating to multiple applications for the same invention.

Subsection 64(1) permits the grant of two or more patents on applications for identical (or substantially identical) inventions having the same priority date. However, s64(2) prohibits such a grant upon a standard application where the application claims an invention that is the same as an invention that is the subject of another patent and made by the same inventor with the same priority date.

Similarly, as under s101F, a ground of revocation is an innovation patent that claims an invention that has the same subject as another patent that is made by the same inventor and having the same priority date.

Examination Practice

Examiners should object to a standard application, or an innovation patent, which claims an invention that is the same as the invention claimed in a granted patent by the same inventor, where the relevant claims have the same priority date. The basis for the objection is that the application or patent contravenes s64(2), or s101B, respectively.

[See PERP codes [P13]-[P15] for appropriate objection where the 'other case' is a granted standard patent, a standard application (pre-grant) or an Innovation patent].

Examiners are to interpret the reference to a 'patent' in s64(2) and s101B as meaning a patent that is in force. Thus, the existence of a granted patent does not prohibit the grant of a standard patent, or give rise to the revocation of an innovation patent, for the same invention, provided the pre-existing patent is not in force at the time the standard patent is to be granted or the innovation patent is being examined (for example, if it has been surrendered).

Where a renewal fee on a granted patent has not been paid, but the 6-month grace period for paying that fee has not expired, that patent is still a patent for the purposes of s64(2) or s101B.

Strictly speaking, an objection under s64(2) or s101B only applies in relation to a pre-existing patent. However, insofar as objections under s64(2) are concerned, examiners must also raise an objection where the same invention is claimed in another patent application that has not been granted or accepted (the 'other case'). Where the 'other case' has not been accepted, the objection should be based on the specification of the 'other case' as currently proposed to be amended. The objection should also be raised during examination of the 'other case'.

However, examiners should not raise an objection under s101B where the 'other case' is an application which has not yet proceeded to grant.

Note that where an objection under s64(2) or s101B does not apply solely because the 'other case' (whether a granted patent or an application) claiming the same invention is not in force, examiners must place a note outlining the situation on the 'other case' file, unless the ‘other case’ is a family member that has lapsed due to failure to gain acceptance/certification in time. This is to ensure that the matter is considered in any subsequent application to restore the 'other case'.

Requirement that Inventors be the Same

The pre-existing patent or patent application must have the same inventor as the standard application or innovation patent being examined, regardless of whether the respective applicants/nominated persons/patentees (as the case may be), are the same.

An objection should also be raised if two specifications claim the same invention and each has a common inventor, even if one or both of the specifications also has other inventors.

For example:

  • specification 1 has inventors A and B; and
  • specification 2 has inventors A and C.

or

  • specification 3 has inventors A and B; and
  • specification 4 has inventor A.

In the situation above, examiners should also question the accuracy of the patent requests/notices of entitlement. Since the invention claimed in two specifications is the same, all the inventors would be expected to be the same.

Equally, the patent request/notice of entitlement should be questioned if two specifications claim the same invention and the applicant/nominated person is the same, but there are no common inventors. In this case, examiners should include a note in their report advising the applicant that if the inventors are in fact the same, an objection under s64(2) or s101B may apply.

Where a standard application is a divisional application of a pre-existing parent patent, but the inventor(s) of the divisional application have not been stated in the patent request or notice of entitlement, the inventor(s) should be assumed to be the same as those of the parent for the purpose of any s64(2) considerations.

Comparing the inventions claimed in a Claim

In order to satisfy s64(2) or s101B, the invention must be claimed in a claim of each specification, that is, the claims of the two specifications that are being compared. Thus, in the case of innovation patents which have been granted (but not certified) and in which there are no claims (or no “genuine” claims), s64(2) and s101B do not come into consideration. 

An example of a “non-genuine” claim would be:

“Claim 1. My invention is worth one million dollars.”

Test for 'Same Invention'

The test for whether the claims define the same invention is:

"If the claims of the two specifications were located in the same specification, would there be redundancy of claiming?"

That is to ask whether there are claims of identical scope (see Smith Kline Beecham p.l.c.'s Application [2000] APO 54). However, the requirement for "identical scope" does not necessarily impose a requirement for identical wording; it is the overall scope of each of the claims that is considered.

In Arbitron v Telecontrol Aktiengesellschaft (2010) FCA 302, at paragraph 150 Emmett J stated:

“The fact that the claims of one patent are not literally identical to the claims of another patent does not necessarily mean that they are not for the same invention.  If the differences in wording of the claims are inconsequential, the two sets of claims may nevertheless relate to the same invention.”

When considering whether the claims define the same invention:

"... any situation giving rise to an objection under sec 64(2) must be so plainly evident that it is beyond reasonable argument".

(Smith Kline Beecham p.l.c.'s Application).

Bar to Grant

Under reg 3.18(2)(e), a standard patent cannot be granted on an application because of non-compliance with s64(2). However, examiners should note that non-compliance with s64(2) is not a bar to acceptance, but is rather a bar to grant. Where s64(2) applies, at least one adverse examination report must be issued which includes an objection drawing attention to the situation. This includes:

  • raising an objection at first report even where s64(2) is the only issue; or
  • raising an objection at further report where s64(2) is the only issue, and the situation has not previously been drawn to the attention of the applicant.

An objection must be reiterated in every subsequent adverse report if the s64(2) situation still applies and there are other outstanding objections preventing acceptance of the application. Further objections should acknowledge any remedial action proposed by the applicant.

​​​​​​​Where there is no other outstanding objection preventing acceptance of the application, the case should be accepted despite the s64(2) situation. A bar to grant is to be placed on the file.

Overcoming the s64(2) situation

An applicant may resort to surrendering the other patent to overcome the non-compliance with s64(2). It is essential that any procedure under s137 is completed before the time for granting a patent on the pending application expires.

Alternatively, an applicant may choose to amend the other patent to overcome the non-compliance with s64(2). The amendment must be allowed before a patent can be granted on the pending application.

Note that where an applicant proposes amendments to an accepted application in order to overcome the non-compliance with s64(2), these should be processed according to the procedures outlined in 5.7 Amendments and 5.7.4 Amendments to specifications. 

Examiners should note that the bar to grant should remain in place until the amendments have been allowed.​​​​​​​

    Rebutting Priority Dates

    Examiners should note that where an applicant or patentee successfully rebuts an objection based on s64(2) or s101B, respectively, by indicating that the priority dates of the claims involved are not the same, a novelty objection based on whole of contents will then apply against whichever application or patent has the later priority date.​​​​​​​

    Note:

    • if the later-priority case is a standard application that has not yet commenced examination, examiners must place a case note outlining the situation on the file;
    • if the later-priority case is a granted standard patent, or a certified innovation patent, examiners must consult Oppositions with a view to initiating re-examination; and
    • if the later-priority case is a granted innovation patent, examiners must consult Oppositions with a view to initiating examination.

    Ready to grant

    Other case is a Granted Patent

    When the application is ready to be granted, CEG will assess whether the application has changed via amendment and whether the other granted patent is still in force and/or has been amended.

    If these circumstances have not changed since acceptance, the s64(2) issue therefore still applies, CEG will send a letter to the applicant advising them that the application cannot be granted.

    If the circumstances have changed since acceptance, CEG will forward the case to the relevant examination section for review by the examiner. If, upon reviewing the case, the examiner considers that the application still contravenes s64(2), a bar-to-grant letter, along the lines set out in Annex A - Bar-to-Grant Letter, should be sent by the examiner to the applicant and the bar to grant left in place pending the outcome of the letter.

    Other case is a Standard Application (pre-grant)

    At the time for grant, the application containing the s64(2) bar to grant will be returned to examination for review.

    If the s64(2) situation still exists and:

    • the other patent application has not yet been granted, the present application may be granted. The examiner must place a case note on the file of the other application stating that the present application has been granted. Thus, where the s64(2) issue is extant, only the first application to reach grant can be granted; or
    • the other application has been granted, the present application must not be granted. Examiners should consider whether a bar-to-grant letter should be sent to the applicant.

    Note that when examiners receive a case for review, the task must be given a high priority to ensure that grant of a patent on the pending application is not unnecessarily delayed.

    Innovation Patent

    An innovation patent must satisfy the requirements of s101B before it can be certified. Where one or more claims of an innovation patent being examined repeat claims of a granted patent, an adverse examination report must be issued which includes an objection drawing attention to the situation.

    Note that where one or more claims of the innovation patent being examined repeat claims of an application that has not yet proceeded to grant, this cannot be used as the basis of an objection under s101B. In these circumstances, examiners must place a case note outlining the situation on the innovation patent file.

    Expiry of Examination Period

    Where an objection under s101B is overcome before the expiry of the examination period (and there are no other outstanding examination issues), the innovation patent may be certified.

    Note, however, that if a patentee resorts to surrendering the other patent to overcome the non-compliance with s101B, it is essential that any procedure under s137 is completed before the expiry of the examination period.

    Similarly, if a patentee chooses to amend the other patent to overcome the non-compliance with s101B, the amendment must have been allowed before the expiry of the examination period.

    If the s101B objection has not been overcome when the period for examination expires, the innovation patent will cease.

    Additionals/Divisionals

    Objections based on s64(2) apply equally to additional or divisional applications and their respective parent applications, as well as to unrelated applications. Similarly, objections based on s101B apply equally to divisional applications, as well as unrelated applications.

    Omnibus Claims

    An objection under s64(2) or s101B may also apply where the claims in question are omnibus claims. However, omnibus claims of identical wording are not necessarily claiming the same invention. For example, claims to "A device as claimed in claim 1 substantially as described with reference to the drawings." in two specifications having identical drawings do not necessarily claim the same invention where the 'claim 1's differ.


    Note that only certain types of omnibus claims are allowable for:

    • standard patent applications with an examination request filed on or after 15 April 2013;
    • innovation patents with an examination request filed on or after 15 April 2013; and
    • innovation patents where the Commissioner had not decided before 15 April 2013 to examine the patent. 

    For further information see 5.5.4.3 Omnibus claims.

    Annex A - Bar-to-Grant Letter

    Dear ........,

    As you are aware, your application was accepted despite an objection under subsection 64(2).

    Before the application proceeds to grant, the Commissioner has a duty to consider whether there is a bar to grant. In this regard, the Commissioner has reconsidered the objection and considers that claims ........ repeat claims ........ of your patent number ......... .

    In order to assist you to decide on a course of action, the following explanation is provided.

    [Include an explanation of why the s64(2) objection is still applicable in the light of any responses from the applicant. This can include a reference to a previous report(s) if appropriate].

    You are entitled to be heard before any determination is made. Should you not wish to be heard, you may file written submissions on the matter. If the Commissioner remains of the opinion that there is a bar to grant, then a hearing will be set down forthwith to allow you to be heard.

    Alternatively, you may file a request to surrender your existing patent or, if you believe that the objection can be overcome by amendment, you may file a request under section 104 to amend either specification.

    Consequently, within 60 days of the date of this letter, you are requested to either:

    • request a hearing in this matter;
    • file written submissions;
    • file a request to surrender your patent number.......; or
    • file a request to amend under section 104.


    Yours sincerely,

    [name]