Under reg 3.18(2)(e), a standard patent cannot be granted on an application because of non-compliance with sec 64(2). However, examiners should note that non-compliance with sec 64(2) is not a bar to acceptance, but is rather a bar to grant. Where sec 64(2) applies, at least one adverse examination report must be issued which includes an objection drawing attention to the situation. This includes:

i. raising an objection at first report even where sec 64(2) is the only issue.

ii. raising an objection at further report where sec 64(2) is the only issue and the situation has not previously been drawn to the attention of the applicant.

See below for procedures to follow where:

the other case is a granted patent; or
the other case is a patent application.

Other Case a Granted Patent

Examination Report

Where one or more claims of the application being examined repeat claims of a granted patent, the examination report must include the following objection:

“In my opinion, claims of the present application repeat claims of granted patent <765432. I consider that claims 30-40 of the present application repeat claims 10-20 of the granted patent.>

While this does not preclude the present application from being accepted, under the provisions of Subsection 64(2) of the 1990 Act, a patent cannot be granted on this application in its present form while the same claims are present in another granted patent by the same inventor, having the same priority date and currently being in force.

In order for a patent to be granted on the application in its present form either:

the granted patent must cease or be surrendered; or,
the relevant claims of the granted patent must be amended so as to no longer be the same as those of the present application.

Otherwise you will need to amend the present claims.”

[See also PERP code P13]

This objection must be reiterated in every subsequent adverse report if the sec 64(2) situation still applies and there are other outstanding objections preventing acceptance of the application, but 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 sec 64(2) situation.

Acceptance and Grant

When an application for a standard patent with an outstanding sec 64(2) situation in respect of a granted patent is accepted, a sec 64(2) bar to grant is to be placed on the file and this should be indicated on the ‘Acceptance Report’ screen (screen 6 of 7) during the acceptance process (see 5.10.19.3.8 Acceptance Report).

Where an applicant resorts to surrendering the other patent to overcome the non-compliance with sec 64(2), it is essential that any procedure under sec 137 is completed before the time for granting a patent on the pending application expires.

Similarly, if an applicant chooses to amend the other patent to overcome the non-compliance with sec 64(2), the amendment must have been allowed before a patent can be granted on the pending application.

When the application is, apart from the sec 64(2) bar to grant, ready to be granted, COG 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 and the sec 64(2) issue therefore still applies, COG will send a letter to the applicant advising them that the application cannot be granted. If the circumstances have changed since acceptance, COG will forward the case to the relevant examination section for review by the examiner.

Note: 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.

If, upon reviewing the case, the examiner considers that the application still contravenes sec 64(2), a bar-to-grant letter, along the lines set out in 2.18 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.

Note: Where an applicant proposes amendments to an accepted application in order to overcome the non-compliance with sec 64(2), these should be processed according to the procedures outlined in 2.23 Amendments and 5.13 Voluntary Amendments. Examiners should note that the bar to grant should remain in place until the amendments have been allowed.

Other Case a Patent Application

Examination Report

Note: No objection applies where one or more claims of an innovation patent being examined repeat claims of a patent application (see 2.18.3.2 Innovation Patent).

Where one or more claims of the application being examined repeat claims of another patent application, the examination report must include the following objection:

"In my opinion, claims of the present application repeat claims of patent application <2007209999. I consider that claims 30-40 of the present application repeat claims 10-20 of 2007209999.>

While this does not preclude both applications from being accepted, under the provisions of Subsection 64(2) of the 1990 Act, two patents cannot be granted having claims for the same invention where the inventor and priority date are the same.

If a patent is granted on the present application, it follows that the other application will be barred from grant, unless the relevant claims of that application are amended so as to no longer be the same as those of the present application.”

[See also PERP code P15]

Acceptance and Grant

When an application for a standard patent with an outstanding sec 64(2) situation is accepted, a sec 64(2) bar to grant is to be placed on the file and this should be indicated on the ‘Acceptance Report’ screen (screen 6 of 7) during the acceptance process (see 5.10.19.3.8 Acceptance Report).

At the time for grant, the application containing the sec 64(2) bar to grant will be returned to examination for review.

Note: 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.

If the sec 64(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 sec 64(2) issue is extant, only the first application to reach grant can be granted.
the other application has been granted, the present application must not be granted. Examiners should proceed as outlined in ‘Other Case a Granted Patent, Acceptance and Grant’ above and consider whether a bar-to-grant letter should be sent to the applicant.