Some recent court decisions have focused more attention on double patenting in Canada. Double patenting occurs when someone obtains two patents for the same (“co-terminus”) or similar (“obvious-type”) inventions. If challenged, granted patent claims can be found invalid if they are found to be double patenting over another patent owned by the applicant.
The Supreme Court of Canada has cautioned that, “If a subsequent patent issues with identical claims, there is an improper extension of the monopoly.” Many of the decisions on double patenting, including this statement from the Supreme Court arise from disputes over “old Act” patents where the term of the patent is based on the grant date. Therefore a subsequently granted patent for the same invention would extend the term of the monopoly granted by the combination of the original patent and the second patent.
However, as I explained in my 2015 column, “Does Double Patenting Need New Rules?”, this rational is less clear for all patents filed after 1989, so-called ‘New Act’ patents. For the last 30+ years, patents granted based on patent applications filed after 1989 expire based on their filing date. From a parent patent application, a divisional patent application in the same family has the same filing date as its parent application. As a result, two patents based on the same original filing will expire on the same day, even if they are similar or cover the same invention.
Rational for Double Patenting
In NCS Multistage Inc. v. Kobold Corporation, 2023 FC 1486, a decision released this fall, the court discussed some of the rationales for double patenting even with the ‘new Act’ patents. First, there is a concern that a patent owner may obtain improperly broader scope of a monopoly in a divisional patent without including an inventive difference with the parent application. Namely that the applicant may not disclose anything further in the divisional application but receive a broader monopoly. The court also suggested that if there is a find of invalidity against one patent “a question may arise of whether the divisional should be able to continue to exist.” Although one could argue the same concerns arise for any independent claim added to a patent application during prosecution.
In other contexts, there have been concerns that double patenting may increase burdens under the Notice of Compliance regime for pharmaceuticals – see for example, Glaxosmithkline Inc. v Apotex Inc, 2003 FCT 687 at 90: “The existence of additional patents allows the patent-holder to bring additional applications, thereby obtaining multiple injunctive periods.” In the recent decision, AbbVie Corporation v. JAMP Pharma Corporation, 2023 FC 1520 at 620, the court found there was no such harm where the later filed patent application was dedicated to the public, “[a] double-patent on the register, even when it does not confer an advantage on the patentee, should be removed. AbbVie’s dedication [to the public] has done that.”
In the United States applicants may use a terminal disclaimers to “obviate judicially created double patenting” by disclaiming any a portion of the term of a patent and confirming that the patent will be commonly owned with the second patent – see MPEP s1490.
Voluntary vs Forced Divisionals
Double patenting does not apply to patents that resulted from the filing of a divisional patent application required by the patent office. Section 36(2.1) states that,
Where an application (the “original application”) describes and claims more than one invention, the applicant shall, on the direction of the Commissioner, limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application…”
However, it is also possible for an applicant to voluntarily file a divisional application. Section 36(2) says, “Where an application (the “original application”) describes more than one invention, the applicant may limit the claims to one invention only, and any other invention disclosed may be made the subject of a divisional application”. There is a risk to the applicant if a divisional application is filed voluntarily and it is later determined by a court that the claims of the divisional are not patentably distinct from the parent, falling afoul of the double patenting prohibition.
However, in the NCS Multistage Inc. v. Kobold Corporation, 2023 FC 1486 decision from this fall, the Court identified that issue is not always clear:
[244] In sum, there is divergence in the case law as to what constitutes a voluntary or forced divisional patent. The approach in [Abbott Laboratories v Canada (Minister of Health), 2009 FC 648] suggests that where an inventor can trace the origin of the divisional back to the forced divisional application it will be immune from double patenting attacks. Whereas [Biogen Canada Inc v Taro Pharmaceuticals Inc, 2020 FC 621] suggests that something more than a mere unity of invention objection from the patent examiner is required in order for the divisional application to constitute a forced divisional application.
[245] The preferred approach is an informed middle ground. Where an inventor can trace the origin of the divisional back to a direction of the Commissioner, it will be immune from double patenting attacks. However, where a voluntary divisional has been made by the applicant, at their cores the divisionals must disclose different inventions to avoid double patenting attacks. An applicant should not be penalized for electing for a divisional, but such an election should not be a mere attempt to secure the claims and take advantage of the earlier priority date of the parent patent.
These decisions should cause applicants to reflect carefully on their plans for divisional patent applications and the scope of the claims being pursued in those applications if they want to avoid facing double patenting invalidity allegations.
Patent Rules
A further wrinkle on double patenting arises with changes to the Patent Act and Patent Rules that came into effect for patent applications where the request for examination was filed on or after October 2022. The patent office charges per-claim fees if the application contains more than 20 claims at any point during examination. This can make including all potential claims in a single application for consideration by the examiner (and to trigger any divisional applications), an expensive plan. The extra fees may encourage applicants to voluntarily elect to pursue divisional applications and therefore opening the resulting patents to double patenting attacks, or use hybrid claim sets to get divisional objections without including every potential claim.
Further, Canadian Patent Act changes expected by January 1, 2025 will add a form of patent term adjustment which may give different terms of protection for patents granted in the same family, with the same filing date.
What is next
Double patenting and its impact on divisional practice is an area of Canadian patent law that can be difficult to navigate because the trade offs are not necessarily clear when decisions have to be made during prosecution, assessing whether two claims are patentability distinct is difficult, and the impact of decisions may not arise until a patent is being enforced in litigation. I expect that the uncertainty around forced and voluntary divisionals as well as the new rules on claim fees and patent term adjustment will result in further pressure to clarify double patenting, and perhaps introduce something similar to the US terminal disclaimers or other procedural steps to reduce the risk to patent applicants.
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