We reported last month on one of the proposed changes in the ILPTO’s examination guidelines, viz. the proposal to stop rejecting applications having claims that “overlap” with claims of an applicant’s own granted patent or pending application, provided the two filings had the same filing date. On February 10, as expected, the ILPTO announced that it was implementing this change.
As an epilogue, on February 11 we received confirmation that the ILPTO has indeed implemented the change: we received an allowance in a case that had previously been rejected for “overlap” with one of the applicant’s earlier-issued patents. This situation was a bit unusual in that the two applications have the same filing dates and same priority dates, but were filed as two separate applications, not as a parent and divisional. Nevertheless, they fit the criteria of the revised examination guidelines: same filing date, as noted, and the newly-allowed case claims a genus of compounds, whereas the already-granted patent claims a single compound falling within the genus. In our most recent response, which was filed after the ILPTO announced the proposed examination policy change, we argued that the rejection had no basis in the statute, as evidenced by the proposed change. The letter from the examiner neither confirms nor denies our argument, but simply states that “In view of the change in the examination guidelines regarding applications having the same filing date, it is now permissible to withdraw the rejection under section 2 of the statute [i.e. double-patenting – DJF].”
Since the change in the ILPTO’s examination guidelines ostensibly reflects a change in the ILPTO’s view regarding section 2 of the statute, and the wording of the statute itself remains unchanged, it will be interesting to see if the ILPTO’s new view is eventually challenged during litigation, and if so, how that plays out. Until then, applicants will not need to worry about “overlap” between the claims of their parent and divisional applications.