What do you mean by Double Patenting? – An Overview

Double Patenting
Karan Singh
| Updated: Dec 09, 2021 | Category: Patent

Double Patenting is the practice or a method of attempting to obtain various Patents in a similar region. An inventor can file applications of multiple Patents in multiple countries for the same invention, but not in the same country. The issuance of Double Patenting arises when there are two or more pending Patent applications for the same invention. If an applicant or inventor submits the 1st Patent application on a particular date (ABC) and another Patent application (2nd application) for the same invention on date XYZ. Then the 2nd application would be deemed a Double Patent, and the Patent will not be extended for the 2nd filing of the Patent application. Double Patenting problems can arise only if the second application is published or a Patent has been issued or granted.

Through a Patent, an inventor or applicant informs the public regarding the essential invention. A Patent primarily states the invention’s nature, the validity of right and the ID of its owner. An inventor cannot be granted two Patents for one invention. The Patent itself is only an inventor’s right that too for a limited period of ten years. As soon as the Patent expires, the invention will be available for the general public. Numerous applications for one Patent could result in infringement. In most Patent systems internationally, Double Patenting is impermissible. But, the Double Patenting thoughts may vary beyond jurisdictions.

What are the Requisites for Raising Objections against Double Patenting?

Following are some vital requisites for raising objections against Double Patenting:

  1. Entity: if the entity submitting the Patent application in question is common. The only condition required is common ownership. If it exists, then there will be a case of Double Patenting or an attempt to do the same.
  2. Claimed Subject Matter: Patent Laws avoid prolonging Patent Rights that are against the law. Double Patenting arises if similar or identical claims are there.
  3. Other Patent applications should be Granted or Pending: Conflict of claims or Double Patent can arise only when the other application is published or alive or granted a Patent.

Double Patenting in India

In India, there is such a provision stating the invalidity of Double Patenting. But, it can be concluded from Section 46(2) of the Patents Act, 1970. The said provision states that only one Patent can be granted for a single invention. However, an objection of Double Patenting may be raised in the case of a Patent application claiming a similar invention as in another Patent by the same applicant, even if the effective date of application filing under consideration is earlier than that Patent. For instance, in cases where a later-filed application gets granted before the earlier-filed application, an objection of claims with a similar scope may be raised at the time of prosecution of the earlier-filed Patent registration application.

Section 46(2), Section 16, Clause 5.2, and Section 13(1)(b) Indian Patent Act, 1970 relates to prior claiming if two applications claim the same invention by the similar applicant, even if the date of filing is different, it will be the matter of Double Patenting.

Clause 5.2:

  • An earlier claiming document search will be with the inventor’s name/applicant’s name, or both. So it is better to avoid patenting;
  • In the search report, the examiner includes:
  • The application number;
  • The Patent Classification[1] (IPC);
  • The relevant mentions their number & date of publication, and other information.

Terminal Disclaimer

There are 2 different types of Double Patenting in the United States of America (USA) one is Statutory, and the second is Non-Statutory or obvious. Filing a Terminal Disclaimer is a method to overcome a Patenting rejection in case of or Non-Statutory Patenting. It says that the second Patent application expires at the same time when the first Patent will be feasible. It is relevant only if both applications are similar or identical.

EPO Conclusions

The outline of the EPO conclusions for the prohibition of Patenting with referral to the increased board of appeal is as follows:

  • There is no forthcoming provision in the European Patent Convention (EPC) that disallows Double Patenting;
  • It is not obvious whether the Patenting bar is a part of the convention or not;
  • Both Article 76(1) EPC & Article 63(1) EPC don’t have scope for the Patenting counter;
  • There was no amendment in Article 139(3) EPC;
  • Article 60(1) EPC is not the foundation of Patenting;
  • Article 125 EPC cannot initiate a new ground of refusal for a bar on Patenting & others.

Hence, the matter of Double Patenting is entirely left to National Law.

Conclusion

India has attracted worldwide attention with the constant development of its IPR (Intellectual Property Rights) system. Further, there are regular amendments to fasten the process of Patent examination and promote transparency at the IPO (Indian Patent Office). Quick implementation of progressive modifications of the IPR ecosystems facilities start-ups in India.

Read our Article:How Can an Organisation Use Patent Monitoring to Track Competitors?

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Karan Singh

A legal writing enthusiast, a wanderer, and a zealous reader. After gaining a lot of knowledge about the diverse legal topics and developing research skills, Karan joined the league of legal content writers to deliver quality-rich blogs.

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