2.18.3.2 Innovation Patent

In this topic:

An innovation patent must satisfy the requirements of sec 101B 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: 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 sec 101B. In these circumstances, examiners must place a case note outlining the situation on the innovation patent file.

Examination Report

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

“In my opinion claims of the present innovation patent repeat claims of granted patent  <765432.  I consider that claims 1-5 of the present innovation patent repeat claims 10-14 of the granted patent.>

Under the provisions of Section 101B of the 1990 Act, the current innovation patent cannot be certified 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 the innovation patent to be certified 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 innovation patent.

Otherwise you will need to amend the present claims.”

This objection must be reiterated in every adverse report issued in respect of the innovation patent if the situation still applies, but should acknowledge any remedial action proposed by the patentee.

Expiry of Examination Period

Where an objection under sec 101B 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 sec 101B, it is essential that any procedure under sec 137 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 sec 101B, the amendment must have been allowed before the expiry of the examination period.

If the sec 101B objection has not been overcome when the period for examination expires, the innovation patent will cease.