Today on IPcopy an issue that was raised during the recent consultation relating to the implementation of the Unified Patent Court Agreement and the two unitary patent regulations into UK law – Double Patenting.
As noted in the consultation:
We do not permit more than one patent to be valid in the UK in relation to the same invention (this is commonly referred to as “double patenting”). Double patenting can increase costs to business as they have to deal with multiple patents for the same invention and possibly face more than one infringement case in relation to the same act.
In order to prevent double patenting where an EP(UK) and a GB patent have been granted for the same invention, the Comptroller has the power to revoke the GB patent. We propose extending this power so that the Comptroller has the power to revoke the GB patent if a unitary patent is registered for the same invention. To do this we will apply sections 73(2) to (4) of the Patents Act to Unitary Patents.
So, it seems the official UK position on double patenting is fairly clear.
However, at one of the (relatively) recent workshops hosted by the UKIPO to discuss the proposed changes to UK law, IPcopy understands that a number of parties suggested that double patenting should be allowed.
There are a number of possible benefits of allowing double patenting of a UK patent with a unitary patent. It may for example be easier to defend a UK patent. Additionally, during the early years of the Unified Patents Court, having a UK patent as well would provide a backup in case the unitary system does not work as expected.
Of course if you have the motivation (and the funds) it is already possible, by filing divisional applications with carefully crafted claim sets, to effectively engineer a situation where a single invention has two patents of very similar scope attached to it.
A possible downside to allowing double patenting might be the rise of dual actions, however IPcopy suggests that the potential upside of having a “fallback” UK patent, especially to SMEs who may not be keen on the idea of having to defend EP(UK) patents and Unitary Patents in the UPC, outweighs this concern and we would not be surprised to see double patenting allowed between UK patents and Unitary Patents. A follow up question that’s interesting to ask is whether double patenting between EP(UK) patents and UK patents should be allowed and this is a question that CIPA has tackled in their response to the consultation – see comments below.
CIPA (see page 23 onwards)
CIPA notes that it appreciates the downsides of double patenting but then lays out a case to allow it. Parallels are drawn with both the trade mark system and the designs system both of which allow an overlap between UK and community rights and both of which have safeguards preventing separate actions for the same cause of action between the same parties. CIPA suggests that
If the IPO is minded to permit double patenting, then it could instead amend the Patents Act to prevent two actions being brought in separate courts for infringement of parallel rights. Once a decision has been reached, the same parties can be estopped from arguing the same issues again, but in relation to the other patent.
CIPA also points out that the practice of withdrawing a UK designation of a European patent just before grant will not be possible for parties interested in securing unitary patent protection. Unitary patents might also be susceptible to revocation in the face of a “local” novelty citation that would have no impact on a UK patent. CIPA suggests that safeguards could be introduced enabling for example the UK comptroller to revoke a UK patent if a corresponding unitary patent has fallen for a reason that also is relevant to the UK patent. It would also be possible to introduce abuse provisions to prevent more than one patent being enforced for the same invention.
CIPA also suggests that it might be the time to revisit the ban on double patenting between UK patents and EP(UK) patents. Once the transitional provisions of the UPC Agreement have run their course then all European patents will be heard in the UPC instead of the present case where both EP(UK)s and UK patents are heard in the same UK courts.
IP Federation (see page 9)
The IP Federation would prefer to see no double patenting but they see a couple of factors to consider:
- a unitary patent can only be litigated in the UPC whereas national patents can be litigated locally which might benefit SMEs. This might actually encourage SMEs to seek out local protection and have access to local courts while also applying for broader protection
- Some countries such as Germany effectively permit double patenting (in Germany this is via the utility model system).
The UKIPO’s consultation is now closed and they are considering the responses received. As we hear of any developments in the area of double patenting we’ll provide an update.
Mark Richardson 13 November 2014