2.18.2 Practice

Date Published

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 sec 64(2), or sec 101B, respectively.

Examiners are to interpret the reference to a 'patent' in sec 64(2) and sec 101B 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 (e.g. 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 sec 64(2) or sec 101B.

Strictly speaking, an objection under sec 64(2) or sec 101B only applies in relation to a pre-existing patent. However, insofar as objections under sec 64(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') (see Application for a Standard Patent). 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 sec 101B where the 'other case' is an application which has not yet proceeded to grant (see Innovation Patent).

Note: Where an objection under sec 64(2) or sec 101B 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'.