Double patenting

Everyone knows that innovative technical solutions need to be provided with the legal protection that guarantees the defense of the legislation of the state, in which it has been requested. The obtained the patent rights for an invention, a utility model and an industrial design allow gaining maximum profit, thereby they will be a basis of economic prosperity and they will be able to protect the patent holder from the actions of unfair competitors.

In accordance with Paragraph 1 of Article 1345 of the Civil Code of the Russian Federation, the intellectual rights to the inventions, the utility models and the industrial designs shall be the patent rights. But not every result of the creative activity can be called an invention, an industrial design or a utility model. And in order to obtain a patent for the created subject matter, it must comply with the patentability criteria of the invention, the utility model or the industrial design. Thus, one of the patentability conditions for the inventions, the utility models and the industrial designs is novelty. In this case, the subject matter claimed for patenting will be considered as new, if it is not known from the prior art, which includes all the data that has become known in the world before the priority date. And if in the process of obtaining the legal protection the authorized authority establishes, according to the result of the examination, that such patentability criterion as the world novelty is absent, then the claimed decision will not be recognized by the experts of the Office as patentable.

Based on the above, it follows that one technical solution can be patented in the world only once. But despite this fact, there is such a concept as double patenting. Let us get acquainted with it in more detail, and at first, let us consider Paragraph 1 of Article 1383 of the Civil Code of the Russian Federation, which regulates the consequences of a coincidence of the priority dates of the invention, the utility model or the industrial design.

If it is established in the process of the examination that the different applicants have filed the applications for the identical inventions, the utility models or the industrial designs and these applications have the same priority date, then the patent for the invention, the utility model or the industrial design may be granted only according to one of such applications to the person determined by an agreement between the applicants, at the same time, the applicants must inform the Federal Executive Authority on Intellectual Property about the agreement reached by them within twelve months from the date of sending the relevant notification by this Federal Authority.

In the case, when the applications for the identical inventions and (or) the utility models or the identical industrial designs, which have the same priority date are filed by the same applicant, the patent shall be granted according to the application selected by the applicant. The applicant must inform about his choice within twelve months from the date of sending the relevant notification by this Federal Authority.

Thus, in the situation with the identical applications for the grant of the patent of the Russian Federation, which arises if there are two identical applications with the same priority date, which are filed by the different applicants or by the same applicant (so-called double patenting), the grant of two patents according to such applications shall not be allowed. However, if for some reason, the applicant has received two patents according to the applications filed that protect the same subject matter, then the situation of double patenting arises, and the patent turns out to be disputable.

As we have already found out, patenting two identical technical solutions is not allowed, even if they belong to the same person and have the same priority date, and it is possible to obtain one protection document only subject to the refusal from the other one. So, when choosing between the utility model and the invention, the applicant decides which subject matter of intellectual property is more important for him. At the same time, the possibility of combining the advantages of these types of protection is still available.

So, in accordance with Article 1397 of the Civil Code of the Russian Federation, nothing prevents the applicant from obtaining the patent for the utility model or the invention of the Russian Federation and the Eurasian patent for the identical inventions.

In the case, when the Eurasian patent and the Russian Federation patent for the identical inventions or for the identical invention and the utility model that have the same priority date belong to the different patent holders, such inventions or the invention and the utility model may be used only in compliance with the rights of all patent holders. And if the Eurasian patent and the Russian Federation patent for the identical inventions or the identical invention and the utility model that have the same priority date belong to the same person, this person may grant to any person the right to use such inventions or the invention and the utility model under the license agreements concluded on the basis of these patents. In this case, both patents will be in effect on the territory of the Russian Federation.

Now, let us consider the possibility of double patenting in other countries. For example, according to the Guidelines for Examination in the European Patent Office (Part G, Chapter IV, 5.4 of Guidelines for Examination), the European Patent Convention does not consider directly the European applications filed simultaneously on the same effective date and by the same applicant. Thus, the EPO is guided by the principle, according to which two patents cannot be granted to the same applicant for the same invention. The Expanded Board of Appeal has adopted a prohibition to double patenting, which is based on the view that the applicant has not the legitimate interest in the proceedings leading to the grant of the second patent for the same subject matter, if he already has the patent for this technical solution. If the applicant still submits two or more European applications that indicate the same state or the states with the same filing date or the priority and that relate to the same invention, the applicant should be informed that he must either amend one or more applications so that the subject matter of the claims of the applications would not be identical, or withdraw the doubling applications, or choose the consideration of which of these applications he would like to continue.

In the USA, there are two types of double patenting in accordance with Article 101 of Chapter 35 of the United States Code. The first type refers to the refusal in double patenting of “the same invention,” and it is written in the singular that one inventor “... can obtain a patent” (a sole patent). The second type of the refusal refers “obviousness.” The refusal in double patenting is based on the judicially created doctrine based on the state policy, and it is primarily intended to prevent the extension of the effect period of the patent by prohibiting the effect of the second patent, which are the obvious variations of the claims in the earlier patent.

The Australian patent legislation also stipulates the prohibition of double patenting for the same inventor regarding the same invention, in accordance with Subsection 64 (2) of the Australian patent act. However, for the different inventors, where there are two or more patent applications for the identical or substantially identical inventions, the grant of the patent for one of these applications shall not prevent granting the patent for any of the other applications, in accordance with Subsection 64 (2) of the Australian patent act.

Making a conclusion on double patenting all over the world, it can be noted that there is no interest in patenting the identical or the very similar inventions by the same person abroad, and there is no need in the cumulative protection in the countries with the multiple patent systems, since it is prohibited, except, as we have already found out, the Russian Federation and the member states of the Eurasian Patent Convention.