Today, new regulations come into effect which clarify the requirements for filing divisional patent applications in New Zealand. These regulations, the Patent Amendment Regulations 2018, allow a divisional application to be filed with claims that overlap in scope with the claims of the parent application (including, for example, refiling the same claim set as the parent application).
Under the previous law, neither a divisional nor its parent application could include a claim or claims for substantially the same matter as claimed in the other, and it was uncertain whether this requirement had to be met on filing of the divisional application in order for the application to be entitled to divisional status. Failure to avoid double patenting at the time of filing a divisional application may have provided a ground for a third party to challenge the validity of the application.
Due to the uncertainty under the previous law, to avoid issues of double patenting on filing, it became practice to file divisional applications with claim or claims that had no overlap in scope with the claims of the parent application. This was achieved by either (i) filing the divisional application with a new claim not found in the parent application, or (ii) amending the claims in the parent application to exclude the subject matter which was to be claimed in the divisional application prior to filing.
In contrast to the old law, the new regulations shift the requirement that a divisional patent application must not include a claim or claims for substantially the same matter as in the parent application, to a consideration for acceptance of the divisional patent application. Accordingly, Applicants can now validly file divisional applications with claims having overlap in (or identical) scope to those of the parent, and amendments can be made prior to acceptance to avoid double patenting.
These changes mean that applicants can once again file divisional applications using claims overlapping with the parent application, e.g. where it has not been possible to achieve acceptance by the final acceptance date, or as a precautionary measure in anticipation of a possible opposition to the parent application.