The mystery and mastery of double patenting
Double patenting is a mysterious issue. On the one hand, many patent systems (including the European Patent Convention [EPC] and Italian systems) don’t have any express provisions prohibiting double patenting, but it seems to be commonly accepted as an implicit principle.
On the other hand, double patenting is only occasionally subject to patent litigation, but it is of fundamental importance for developing patent strategies based on divisional applications. For example, the Italian Patent and Trademark Office quite often issues rejections or asks for clarifications when a voluntary divisional application is filed.
In this context, the present article tries to shed some light on this issue. To this end, the following situations—where double patenting most commonly arises—will be briefly analysed: (a) divisional application; (b) internal priority; and (c) European patent claiming priority to national filing and validated in that country.
A threat for divisional patent applications?
In situation (a) the prevailing case law of the European Patent Office (EPO), namely decisions G1/5 and G1/6, recognises double patenting on the basis that an applicant has no legitimate interest in obtaining two patents granted for the same invention. Substantially the same language can also be found in the EPO guidelines C-IV,7.4.
Decision T0318/14 was faced with the question as to whether the same principle (a lack of legitimate interest) could be applied to situation (b), as had a previous decision, T1423/07 (although, in that case, the applicants were not the same).
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