Can Two Patents be Granted on the same Invention?

By

Sakshi Shairwal

Sri Abhigna

A patent can be defined as an exclusive privilege given to a person, by the State, to prohibit others from utilizing, creating, and selling his/her invention for a specified duration of time. It endows a monopoly right over an invention. The primary aim of the Patent law is to encourage inventors to create and contribute to their fields, whilst receiving exclusive rights to their inventions. Patent law, around the world, generally intends to grant a bundle of rights to an investor for his/her invention for a limited period of time, and after the expiry of such a period, the invention enters the public domain for the benefit of the public. Furthermore, the core idea of a patent indicates that a person can obtain only one patent for an invention, ruling out the possibility of having two patents for the same invention. In Patent Law, this situation is termed as “Double patenting”. It denotes a practice of obtaining or granting (or attempting to obtain or grant) two or more patents for a single invention, by the same applicant, in the same jurisdiction. In India, this subject appears to carry numerous ambiguities due to the lack of explicit provision in the law and unclear interpretative stand.

The doctrine of double patenting intends to prevent the unjustified extension of patent exclusivity beyond the term of a patent. The existence of this general rule of double patenting prevents a person from acquiring multiple patents on the same invention or concept, and by extension, obtaining a monopoly over the same for an indefinite period of time. Depriving the public of the free enjoyment of invention after the expiry of a patent is a way of taking away the way of the thing bought and paid for. Double patenting disentitles the public of the consideration it was to receive for being barred from free use of the thing during the first patent's term. Other stakeholders, in addition to the general public, benefit from the general rule. This rule also assists the patent offices by saving their time and efforts, as the officials are not required to spend time assessing and examining multiple patent applications concerning the same subject matter. While raising an objection of double patenting, the patent office’s probe for three pre-requisites, namely:

I.) Entity

It is required that the applicant or inventive entity in the subject, remain common. The presence of at least one of the inventors must be common. As long as there is common ownership, it will be regarded as a case of double patenting.

II.) Same or substantially identical invention

If the patents or the applications have the same or similar claims and not similar descriptions, then the case may be regarded as double patenting.

III.) Existence of other pending or granted patent application

To raise this objection, there is a requirement of having a pending application or a granted patent. In the case where the application has been abandoned, the issue of double patenting does not arise.

The contextual interpretation of double patenting appears to vary in different jurisdictions. This difference can be noted as, for example, the European Patent Office may allow overlapping claims whereas in the US, these claims may be objected to owing to non-statutory obviousness. And in India, overlapping claims can be objected to. Under the US patent law, the judicial doctrine of type of obviousness deals with double patenting of same or identical inventions. As for the European patent law, the European Patent Organization (EPO) addresses the issue of double patenting. Though there is no provision under the Indian Patent Law barring double patenting, it can be deduced from Section 46(2) of the Indian Patents Act, 1970 (hereafter referred to as “Act”) along with other provisions concerning prior claiming, divisional applications and patent of additions.

The decision of the Controller of patents in (Controller’s decision in the matter of Indian patent application 2666/CHENP/2008) indicates that an objection under section 46(2) may be raised not only in cases where claims have an identical scope but also in cases where claims have overlapping scope. Furthermore, prior claiming, as provided under Section 13(1) (b) of the Act, poses relevance to double patenting when both the applications have common applicants or inventive entities. If such a situation arises, the Controller may direct that a reference to that other specification be inserted by way of notice to the public in the applicant’s complete specification.

In the case of divisional applications, where two or more of these applications are filed based on a patent application, the subsequent one is examined with regards to the parent application. Section 16 of the Act enumerates this provision which empowers the patent examiner to seek an amendment of the claims of either the patent or divisional application. This act ensures that neither of the applications includes a claim for the same subject matter, listed in another. If the applicant fails to amend the applications in a way that the scope of claims is not identical or overlapping or proceed with any one of the applications of his choice, the other application will be refused, as mandated by Section 46(2) and/or Section 13(1)(b), Section 16(3) or Section 54 of the Act. In spite of these existent provisions, different patent offices in India appear to interpret and apply these requirements differently, thus giving birth to uncertainty. This issue can be addressed with the delineation of the law and its interpretation.

Sources:

https://www.mondaq.com/india/patent/656402/patents-law-in-india--everything-you-must-know?

https://www.obhanandassociates.com/wp-content/uploads/2016/07/DOUBLE-PATENTING-2015.pdf

https://iclg.com/practice-areas/patents-laws-and-regulations/india

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