Double patenting
Encyclopedia
Double patenting is the grant of two patents for one single invention
, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention.
(EPC) does not contain any specific provisions relating to double patenting. The European Patent Office's (EPO) Boards of Appeal have however addressed the issue in several cases.
accepted, by way of obiter dictum
, that
The Board therefore accepted the practice of the EPO "that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent."
The Board in case T 307/03 explicitly disagreed with the apparent conclusion of earlier decision T 587/98 that there would be no basis in the EPC prohibiting "conflicting claims".
In case T 307/03, which related to a pending
divisional application of a granted European patent, three requests were pending. In the main request, the subject-matter of claim 1 corresponded exactly to the subject-matter of claim 3 when dependent on claim 1 of the granted European patent (that is, the patent granted on the parent application). The claim was therefore objected for double patenting and the main request was not allowed into the proceedings. The first auxiliary request was not allowed into the proceedings for essentially the same reasons. Finally, in the second auxiliary request, the subject-matter of the main claim encompassed by the subject-matter of claim 3 of the parent application as granted. This request was also not allowed into the proceedings on the ground of double patenting. The divisional application was therefore refused.
this did not lead to a double patenting objection. This was found by the Board 3.4.02 to be in line with decisions T 118/91, point 2.4.1 of the reasons, T 80/98, point 9, T 587/98 (OJ EPO 2000, 497), point 3.3, T 475/02, point 8.6, T 411/03, point 4.2, T 425/03, point 4.2, T 467/03, point 4.2, T 468/03, point 4.2, and T 579/05, point 2.2, and the obiter dictum in decisions G 1/05 and G 1/06.
. However:
and filed by the same party or his successor in title".
(UK) contains an express provision relating to the prohibition of double patenting. UK Patents Act 1977 (as amended) states in Section 18(5):
Double patenting rejections are commonly seen in continuing patent application
s. Such rejections can usually be overcome if the patent applicant files a terminal disclaimer and disclaims
the term of the later-issuing patent that extends beyond the term of the earlier patent. The disclaimer may be filed, however, only if the same inventor or combination of inventors is named in both patents. Even then, the rejections may stand because of unfavorable facts. The disclaimer is not an admission that the invention is the "same", and will not create an estoppel or contractual obligation when the inventor has made admissions about "the invention".
Invention
An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...
, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention.
European Patent Convention
The European Patent ConventionEuropean Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) does not contain any specific provisions relating to double patenting. The European Patent Office's (EPO) Boards of Appeal have however addressed the issue in several cases.
T 587/98
In 2000, the EPO's Technical Board of Appeal 3.5.2, in case T 587/98, held that- "there is no express or implicit provision in the EPC which prohibits the presence in a divisional application of an independent claimClaim (patent)Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...
- explicitly or as a notional claim arrived at by partitioning of an actual claim into notional claims reciting explicit alternatives - which is related to an independent claim in the parent application (or patent if, as in the present case, it has already been granted) in such a way that the 'parent' claim includes all the features of the 'divisional' claim combined with an additional feature."
Obiter dictum in G 1/05 and G 1/06
However, in June 2007, the Enlarged Board of Appeal of the EPO in cases G 1/05 and G 1/06G 1/05 and G 1/06
G 1/05 and G 1/06 are decisions of the Enlarged Board of Appeal of the European Patent Office that were issued on 28 June 2007 and answer questions relating to divisional applications under the European Patent Convention . The two decisions were published in the Official Journal of the EPO in May...
accepted, by way of obiter dictum
Obiter dictum
Obiter dictum is Latin for a statement "said in passing". An obiter dictum is a remark or observation made by a judge that, although included in the body of the court's opinion, does not form a necessary part of the court's decision...
, that
- "the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor.
The Board therefore accepted the practice of the EPO "that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent."
T 307/03
Soon after, in July 2007, the Technical Board 3.3.07 in case T 307/03 followed the Enlarged Board of Appeal reasoning and held that a "principle of prohibition of double patenting" was applicable under EPC. It additionally held that the double patenting prohibition was also applicable for a "later claim more broadly formulated" (compared to a claim already granted in the parent application). The Board notably based its reasoning on the wording of according to which "[the] right to a European patent shall belong to the inventor or his successor in title". In other words,- "[once] a patent has been granted to the inventor (or his successor in title) this right to a patent has been exhausted, and the European Patent Office is entitled to refuse to grant a further patent to the inventor (or his successor in title) for the subject-matter for which he has already been granted a patent."
The Board in case T 307/03 explicitly disagreed with the apparent conclusion of earlier decision T 587/98 that there would be no basis in the EPC prohibiting "conflicting claims".
In case T 307/03, which related to a pending
Grant procedure before the European Patent Office
The grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the...
divisional application of a granted European patent, three requests were pending. In the main request, the subject-matter of claim 1 corresponded exactly to the subject-matter of claim 3 when dependent on claim 1 of the granted European patent (that is, the patent granted on the parent application). The claim was therefore objected for double patenting and the main request was not allowed into the proceedings. The first auxiliary request was not allowed into the proceedings for essentially the same reasons. Finally, in the second auxiliary request, the subject-matter of the main claim encompassed by the subject-matter of claim 3 of the parent application as granted. This request was also not allowed into the proceedings on the ground of double patenting. The divisional application was therefore refused.
T 1391/07
In case T 1391/07 (November 2008), the Board 3.4.02 held that a double patenting objection did not arise when the claims of two applications only overlap, in such a manner that the scope of protection sought by the invention claimed in the divisional application was notionally different from the scope of protection conferred by the claims of the granted parent patent. In other words, the Board held that when there was a partial overlap in the respective scopes of protection:- "there is at least one technical feature in each of claim 1 [of the divisional application] and claim 1 of the granted parent patent clearly distinguishing the subject-matter of the respective claim from that of the other one of the claims, and that these distinguishing features are such that the scope of protection sought by the invention claimed in the [divisional] application is notionally different from the scope of protection conferred by claim 1 of the granted parent patent",
this did not lead to a double patenting objection. This was found by the Board 3.4.02 to be in line with decisions T 118/91, point 2.4.1 of the reasons, T 80/98, point 9, T 587/98 (OJ EPO 2000, 497), point 3.3, T 475/02, point 8.6, T 411/03, point 4.2, T 425/03, point 4.2, T 467/03, point 4.2, T 468/03, point 4.2, and T 579/05, point 2.2, and the obiter dictum in decisions G 1/05 and G 1/06.
Not a ground of opposition (T 936/04)
In 2008, in case T 936/04, the Board 3.3.07 held that double patenting was not a ground of oppositionOpposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
. However:
- "[it] is within the discretion of the instances of the EPO to raise the objection in opposition or opposition appeal proceedings against proposed amended claims, but this should be done only in clear cases. The purpose behind the principle of prohibition of double patenting is to avoid unnecessary duplication of effort, and not to impose on the instances of the EPO an obligation to make a complex comparison between the case before them and the claims that may have been granted in some other proceedings."
Singapore
Since July 2004, the issue of double patenting provides one possible ground for revocation of all Singapore patent applications. Under section 80(1)(g) of the Singapore Patents Act, a patent may be revoked if "the patent is one of two or more patents for the same invention having the same priority datePriority right
In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively...
and filed by the same party or his successor in title".
United Kingdom
The patent law in the United KingdomUnited Kingdom
The United Kingdom of Great Britain and Northern IrelandIn the United Kingdom and Dependencies, other languages have been officially recognised as legitimate autochthonous languages under the European Charter for Regional or Minority Languages...
(UK) contains an express provision relating to the prohibition of double patenting. UK Patents Act 1977 (as amended) states in Section 18(5):
- "Where two or more applications for a patent for the same invention having the same priority date are filed by the same applicant or his successor in title, the comptrollerComptrollerA comptroller is a management level position responsible for supervising the quality of accounting and financial reporting of an organization.In British government, the Comptroller General or Comptroller and Auditor General is in most countries the external auditor of the budget execution of the...
may on that ground refuse to grant a patent in pursuance of more than one of the applications."
United States
In the United States, “there are generally two types of double patenting rejections. One is the ‘same invention’ type double patenting rejection based on 35 U.S.C. sec. 101, which states in the singular that an inventor "may obtain a patent." The second type of rejection precludes what is referred to as "obviousness type" double patenting. The "nonstatutory-type" double patenting rejection is based on a judicially created doctrine grounded in public policy and which is primarily intended to prevent prolongation of the patent term, by prohibiting claims in a second patent" that are obvious variations on claims in an earlier patent. The terminology "not patentably distinct" or "distinguished" from the earlier claims is often used to describe "obviousness type" double patenting.Double patenting rejections are commonly seen in continuing patent application
Continuing patent application
Under United States patent law, a continuing patent application is a patent application which follows, and claims priority to, an earlier filed patent application....
s. Such rejections can usually be overcome if the patent applicant files a terminal disclaimer and disclaims
Disclaimer
A disclaimer is generally any statement intended to specify or delimit the scope of rights and obligations that may be exercised and enforced by parties in a legally recognized relationship...
the term of the later-issuing patent that extends beyond the term of the earlier patent. The disclaimer may be filed, however, only if the same inventor or combination of inventors is named in both patents. Even then, the rejections may stand because of unfavorable facts. The disclaimer is not an admission that the invention is the "same", and will not create an estoppel or contractual obligation when the inventor has made admissions about "the invention".
External links
- Europe Patent Convention
- Case Law of the Boards of Appeal (Fifth edition 2006), pp. 287–288, III.F.3. Double patenting
- United States