‘Double patenting’ is a legal doctrine, which prohibits multiple patent grants to an applicant for the same invention, or an obvious variation thereof, in any jurisdiction. It obviously prevents inventors from unfairly extending their monopoly beyond the statutory term.
In effect, the rule dictates that once a patent is granted to an inventor for any particular invention, then no other person who has independently invented the same invention can acquire patent rights thereover.
The objectives underpinning this principle are two-fold: One, to prevent the unjustified extension of the patent monopoly beyond the statutory term; and two, to ensure fairness in the patent system by granting patents to distinctive inventions only.
There are two primary types of double patenting.
The first one is statutory (same invention) double patenting, wherein claims in two patent applications are either identical or substantially identical. The other, more-nuanced type is non-statutory (obviousness-type) double patenting, wherein the claims in the second patent application are not identical, but merely obvious variations of the claims in the patent granted earlier. It is apparent that non-obviousness double patenting is often a ‘patent evergreening’ exercise.
In either case, the subsequent patent, if granted, only extends the patentee’s exclusive rights held over the invention beyond the statutory period, thus defeating the very foundational elements of patent protection. Hence, the patent office always examines whether the later claims are distinctly disparate over the earlier ones; if not, the application is likely to be rejected.
In some jurisdictions, double patenting rules prohibit the grant of both a utility patent and a design patent to an invention. European patent laws mandate that applications for the same invention by the same applicant do not proceed to grant, often leading to a refusal if not amended.
In other countries, such as India, the term “double patenting” is not explicitly defined; yet, similar principles are reflected in statutory provisions, which prohibit multiple patents for the same invention and emphasize the need to draft claims clearly, distinctively and unambiguously.
On the contrary, there is no provision under the UK patent laws, which expressly prohibits double patenting. There have been instances, in fact, of concurrent patents granted to different applicants for inventions encompassing similar claims.
In some jurisdictions, such as the United States, applicants can overcome a rejection/objection based on obviousness-type double patenting by filing a terminal disclaimer to show distinctiveness. Such terminal disclaimer makes the second (subsequent) patent expire simultaneously, that is, on the same day as the first. Further, it often requires that both patents remain commonly owned, thereby preventing separate enforcement that could lead to abusive practices.
In conclusion, the double patenting doctrine ensures that inventors do not receive multiple patents for essentially the same invention, which would hinder competition and stop the entry of innovations into the public domain. It eliminates redundant or overlapping patent rights; and, maintains the balance between promoting innovation and preventing monopolistic overreach. Hence, it plays a cardinal role in preserving the integrity of the patent system.
At BLAZE VENTURES, we have elaborate processes and qualified professionals for helping inventors and enterprises with the comprehensive protection of IP rights over their ideas, inventions and innovations in cross-border jurisdictions.
