No Double-Dipping in Patents

NO DOUBLE-DIPPING IN PATENTS

* LAURENCE BOURGET-MERLE ROBIC, LLP LAWYERS, PATENT AND TRADE-MARK AGENTS

The doctrine prohibiting double patenting can be invoked to try to invalidate a patent. Canadian examiners also use it to reject certain patent applications. The issue of double patenting for obviousness is especially difficult to overcome and precautions must be taken when different patent applications are filed based on the same inventive concept.

This doctrine comes from a judicial rule that originates from the pre-1989 provisions of the Patent Act. At the time, the law provided that a patent would expire 17 years after its date of issue, whereas today a patent expires 20 years after its filing date. The rule of double patenting was created to prevent evergreening of patents, which is an undue extension of the monopoly granted to the patentee via successive patents obtained through the addition of elements that are not new or that are obvious. Thus, this doctrine applies when the same parties, inventors and/or applicants are involved.

Although this doctrine has been applied for the first time in the Farbwerke Hoechst case in 1964 [Commissioner of Patents v. Farbwerke Hoechst Aktiengesellschaft Vormals Meister Lucius & Bruning, [1964] R.C.S. 49], it is the Whirlpool2 case, rendered in 2000 by the Supreme Court of Canada [Whirlpool Corp. v. Camco Inc., 2000 CSC 67] that is cited as the reference case for explaining the doctrine. In Whirlpool, it was determined that there are two types of double patenting:

1) double patenting for which the claimed inventions are identical, and 2) "obviousness-type" double patenting that prevents the issuance of a second patent in which claims are not “patentably distinct” from those of the first patent.

The GlaxoSmithKline case [Glaxosmithkline Inc. v. Apotex Inc., 2003 CFPI 687], rendered by the Federal Court in 2003, brought a new element to this doctrine. At a first level, the findings in GlaxoSmithKline were to prevent pharmaceutical inventors from unduly registering patents at the Patent Register under the Patent Medicines Regulations (Notice of Compliance). This decision however extended the doctrine of

© CIPS, 2012. * From ROBIC, LLP, multidisciplinary firm of Lawyers, and Patent and Trade-mark Agents. Published in the Winter 2012 (Vol. 15, no. 4) Newsletter of the firm. Publication 068.146E. ROBIC, LLP MONTREAL QUEBEC th www.robic.ca 1001 Square-Victoria - Bloc E - 8 Floor 2828 Laurier Boulevard, Tower 1, Suite 925 [email protected] Montreal, Quebec, Canada H2Z 2B7 Quebec, Quebec, Canada G1V 0B9 Tel.: +1 514 987-6242 Fax: +1 514 845-7874 Tel.: +1 418 653-1888 Fax.: +1 418 653-0006

double patenting to patents with the same filing date and expiring at the same time, even if “evergreening” of property rights could not be expected in this case.

In Canadian practice, the issue of double patenting occurs, for example, where an applicant has two co-pending patent applications that are not citable against each other, nor for novelty under section 28.2 of the Act, nor for evidence under section 28.3 of the Act, but that claim inventions which have a common inventive concept. It can apply to two distinct applications filed on the same day, which can have identical descriptions or not. If the applications have the same description but different claims (i.e. one application claims a product while another application claims its method of preparation or its use), one can work around the problem by combining the claims of both applications into one, as long as no patent has been granted regarding these applications. However, if both applications have different descriptions and the support for the subject matter of the claims of one application are not found in the other, switching between applications will not be possible. An application will have to be abandoned. Thus, even if it would be acceptable in other countries, it is not advisable to file separate applications claiming inventions with the same inventive concept in Canada. It is preferable, wherever possible, to file a single application where all aspects of the invention are described and claimed.

Double patenting problems occur also in the case of a divisional application, which does not claim a distinct invention from the one claimed in the parent application. This happens, for instance, when limited claims are accepted and the applicant files a division to try to obtain a patent with broader claims, just as it is done in the United Stated by filing a “continuation” application. One can also find a divisional application claiming the manufacturing process or the use of a product that is itself claimed in the parent application.

However, this strategy is not possible in Canada since a divisional application is only acceptable if it claims an invention having a different inventive concept than the invention claimed in the parent application. That is why we also recommend filing a divisional application in Canada only when the original application was first rejected for lack of unity of invention. Even if the applicant believes the application describes separate inventions, we will invite him to add to the application any other claim regarding any invention not already claimed for. This will allow the applicant to obtain the approval of the examiner, or a rejection for lack of unity, if the examiner considers that the new added claims cover a separate invention. It will then be made possible to file a divisional application with complete confidence.

The prohibition of double patenting in Canada may lead to adverse consequences by either preventing an applicant from obtaining a patent for an invention he intended to protect or by invalidating his patent. However, adopting an appropriate strategy as described above can circumvent this problem.

ROBIC, LLP MONTREAL QUEBEC th www.robic.ca 1001 Square-Victoria - Bloc E - 8 Floor 2828 Laurier Boulevard, Tower 1, Suite 925 [email protected] Montreal, Quebec, Canada H2Z 2B7 Quebec, Quebec, Canada G1V 0B9 Tel.: +1 514 987-6242 Fax: +1 514 845-7874 Tel.: +1 418 653-1888 Fax.: +1 418 653-0006

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