In the section just covered, we learned that prior art rejections for obviousness under §103,citing categories of prior art under §§102(e), 102(f), or 102(g) can be removed when there was a common assignee for the prior art reference and the later filed patent application at the time the invention in question was made. Similarly, we discussed that certain other types of prior art can be removed under special circumstances such as when the inventive entity is the same (§102(e)). In cases when the prior art isa patent, there is an additional consideration that needs to be addressed briefly. So far, when we have reviewed patents or patent applications as prior art, we distinctly avoided differentiating the patent as a whole from the claims, pointing out that any section of the qualifying patent or application could be prior art. Likewise, we did not distinguish the specification from the claims when we discussed how those references might be removed, whether because they were by the same inventive entity (e.g.,§102(e)) or because they were subject to a common assignee (§103(c)/102(e))—in either case the whole reference is removed all together. However, nothing explained so far is meant to suggest that the same invention can be patented more than once, it cannot. This means that the claims from a later filed patent application cannot issue if they contain the identical subject matter as the claims of another patent.
Let’s use a hypothetical example to demonstrate the concept. A patent application filed on June 1, 2004, is published on January 3, 2006, by the PCT asWO06/0056791and lists Thompson and Hickman as the two sole inventors. The patent application is published in English and designates the United States. The patent discloses and claims three molecules A, B, and C; a method of making the compounds; and the use of the three compounds to treat certain tropical diseases, including malaria. On December 7, approximately 11 months after the first patent application was published,Thompson and Hickman, again listed as the two sole inventors, file a second patent application that once again discloses and claims compound B together with additional compounds D and E. This patent also discloses methods for making and using the claimed compounds for treating tropical diseases, including malaria. Since the earlier,published patent application was to the exact same inventive entity as the later filed patent application, it does not qualify as prior art under §102(e) (nor §102(a) after it publishes) since the second application is not by another. Moreover, the first patent application was not published more than 1 year before the second application, so it is also not prior art under §102(b). For purposes of patent ability then, it appears that Thompson and Hickman are home free since their earlier filed patent application is not prior art against their later filed patent application.
Does this mean they can patent compound B in their earlier case as well as their later case? The answer is no and the reason follows. Absent special circumstances,a patent is enforceable 20 years from the date of filing the application. So let’s worka timeline for the two patents containing claims to compound B should they both be allowed to issue. The first patent application was filed on June 1, 2004, so a claim to compound B issuing from that patent would expire on June 1, 2024. The second patent application for compound B was filed on December 7, 2006, so a claim to compound B issuing from that patent would expire on December 7, 2026. The net effect is that Thompson and Hickman will have extended their patent rights beyond the normal 20 years to 22 years, 5 months. In terms of patents and public policy, this means that they will have increased the duration of their right without providing any additional benefit to the public, not a very sensible result. As a practical matter, allowing such second patents to issue would also make for a cumbersome and inefficient process because each inventor would have plenty of motivation to file two applications for every invention to capture the extra time. If a social policy requiring more than 20 years for a patent was desired, then there would be more practical ways to accomplish that policy, such as legislatively making the time of exclusivity longer than20 years.
So the law makes sense because it so happens that it is not legally permissible to patent the same invention twice. Section 35 U.S.C. 101, which sets the framework for United States patent law states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a parentheses, subject to the conditions and requirements of this title (emphasis added).
The use of the phrase a patent has been literally interpreted to mean “one patent”when linked together with the modifier new. Thus a new composition is afforded one patent. Recalling the earlier hypothetical, the issuance of more than one patent to the invention consisting of compound B would conflict directly with the language of§101; patenting compound B twice would not be allowed.
In the example set above, we explicitly defined the subject matter in the claims of the later filed patent application to be the same or substantially the same as the claims of the earlier filed patent application. If there are any substantive differences to the claims, then the statutory double patenting situation explained above is not relevant.
A quick test of whether two claims are the same or substantially the same in this context is whether it is possible to literally infringe one of the claims without literally infringing the other. If yes, then the claims are not the same. For example, a claim to achemical process that requires mixing A and B together and heating to a temperature of between 50 and 100 degrees for 3 hours is not the same as one that requires mixingA and B together and heating to a temperature of between 60 and 100 degrees for3 hours; it is possible to practice the first claim without infringing the second simply mixing A and B together by heating between 50 and 59 degrees for 3 hours.

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