Posted On: May 9, 2022

DOUBLE PATENTING

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INTRODUCTION
A patent is a territorial right which is granted for an invention within a particular country. Law permits one patent for a single invention, so as to avoid perpetual exploitation of the invention. The case of double patenting arises when the inventor/applicant tries to obtain multiple patents for a single invention, and/or the invention is disclosed in two different applications. In India, there are no concrete laws/rules pertaining to prohibition of double patenting, whereas this practice can be prevented with the support of other laws. Every patent office carries out prior art search before granting a patent in their respective jurisdiction to avert the possibility of double patenting and evergreening. The most significant technical aspect  to be noted is that the case of double patenting applies to the claims of a patent not the description it discloses, and this is the reason why it does not apply to the divisional patent where the description is same but the invention claimed in the claims is different from the parent application. Knowledgentia Consultants which is the best law firms in Delhi, is recognized for giving expert advice on various issues concerning filing and enforcement of patents. We have one of the best patent consultants in India, who not only simplify the process of filing for our clients but also give an honest opinion about validity of claims as per international best practices.

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PROVISIONS FOR COMBATING “DOUBLE PATENTING” IN INDIA:
Though there is no express provision under the Indian laws regarding double patenting but following provisions support in safeguarding against it:_

Section 13 (1) (b) relates to prior claiming. Under this section, the examiner to whom a patent application is referred is required to search for the other complete specifications where the claim(s) of patent application is claimed in any claim of any other complete specification published on or after the date of filing of the patent application for which the search is being done.

Another provision of interest is stated under section 46(2) of the Patents Act, 1970 which can be interpretated as that only one patent for a single invention is permissible.

Section 46: “(2) A patent shall be granted for one invention only:

Provided that it shall not be competent for any person in a suit or other proceeding to take any objection to a patent on the ground that it has been granted for more than one invention.

Further, under section 16(2) and 16(3) of the Act, the divisional application is not allowed to disclose any extra matter which is not disclosed in the parent application and the divisional application is also not allowed to claim any subject-matter that is claimed in the parent application.

The Section 64(1)(a) further allows any person interested to challenge the validity of a patent on the ground that it has already been claimed in a previous application.

CASE STUDY
ASTRAZENECA AB & ANR. VS ALKEM LABORATORIES LIMITED (CS (COMM) NO. 410/2020)
This case is related to the manufacturing of drug “Dapagliflozin” by Alkem Laboratories, originally patented by Astrazeneca concerning patents IN205147 (granted on 15.03.2007) and IN235625 (granted on 09.07.2009). The difference found between the patents was that one related to the oxygen methyl and the other disclosed the oxygen ethyl species of that particular compound. However, the Alkem Laboratories challenged the validity of the patent on the grounds that a single drug cannot be protected by two patents. The counsels for Alkem Laboratories tried to establish that the instant case was of double-patenting and ever-greening of the patent. Here, the court refused to pass an injunction in favor of Astrazeneca restraining the manufacturing of the drug by Alkem Laboratries.

  1. In case of 1969/MUM/2007 (Applicant: IPCA LABORATORIES LIMITED), the controller was of the view that the two previous applications (i.e., 1967/MUM/2007, and 1968/MUM/2007) relate to the same subject matter and directed the applicant to proceed with a single application only in order to avoid double/triple patenting of the same subject-matter. The controller also denied the request of the applicant to convert the applications (1968/MUM/2007, and 1969/MUM/2007) as patent of additions, citing that the patent of addition should be an improvement in or modification of the main invention, while the latter two applications follow the reaction scheme same as that of the first application (i.e., 1967/MUM/2007).
  2. Similarly, the application, having number 811/MUMNP/2005, was refused by the Controller by citing that its parent application which had had already been granted (IN/PCT/2001/00610/MUM) claimed the same subject matter, even though the parent application claimed the process for producing the purified Anhydro sugar alcohol, while the further/divisional application claimed the product itself. The Controller ruled that a patent shall be granted for one invention only.

Accordingly, the application 3288/KOLNP/2008 was refused by the Controller citing that the claims of the invention are in conflict with the claims of the applications 3402/KOLNP/2008 and 3418/KOLNP/2008, setting aside the fact that all three inventions belonged to the same applicant and the former application was filed before the latter two ones. In this very case, the scope of claims in application 3288’ was anticipated by prior claiming of same substance in the other two applications under Section 13(1)(b) of the Patents Act, 1970.

CONCLUSION
The Indian patent law does not explicitly prohibit the double patenting of the invention. Although, it tries to restrict the granting of such patent application that disguisedly tries to prolong the age of patent. There has been a plethora of patents such as the Astrazeneca, that has already been granted. The cases of double patenting have been observed mostly in the pharma and bio-medical domain where it is relatively less difficult to establish the non-obviousness condition by inducing a minor change in a previous application where the main aim of applicant is to prolong the age of a patent beyond 20 years directly or indirectly; and when both the patents are alive together, the owner of the patents is able to file more than one suit for infringement of a single invention. The double patenting of an invention establishes a monopoly of the inventor/applicant which is not healthy for the competition in the market.

Aparna Jain
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