When filing divisional applications in Southeast Asia, rules and limits vary across jurisdictions and patentees have several major differences to consider.
These include the extent of allowable overlap with the parent application before a double patenting objection is raised, when it will be assessed, and whether double patenting is a ground for revocation. We discuss these considerations below for Singapore, the Philippines, Indonesia, Malaysia, Vietnam, and Thailand.
Singapore
Determination of double patenting
Although the issue of double patenting arises most frequently between a parent and divisional application, it should be noted that this issue can also arise with two pending applications or granted patents which were filed by the same applicant or his successor in title, and which claim the same priority date and the same invention. This means that even applications which are not linked as parent and divisional applications can also be considered for double patenting, as long as the claimed priority date and applicant is the same.
The consideration of what would constitute double patenting is discussed in paragraphs 6.105 to 6.106 of the Singapore examination guidelines. A double patenting situation arises when the claims of two pending applications or granted patents which were filed by the same applicant or his successor in title are identical in scope. An overlap of claim scope is allowed.
For example, referring to paragraph 6.106, if claim 1 of application “A” and claim 1 of application “B” define identical features, and claim 1 in application “A” further defines a specific feature and claim 1 in application “B” further defines a more generic group of corresponding feature, a double patenting objection may be raised if the specific feature in “A” is the only disclosed feature in “B” and there is no basis for reading the specification as constituting a more generic group. On the other hand, if “B” discloses that the specific feature may be selected from a group, no double patenting objection will be raised.
It should also be noted that while there is no specific case law relating to double patenting in Singapore, precedence is expected to be taken from the UK practice where, in Koninklijke Philips Electronics n.v. v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat), the assessment of double patenting will focus on the independent claims. If the scope of the independent claims between the two applications differs, a double patenting objection is unlikely to be raised even if the dependent claims are identical. This would be in line with how claims are construed in Singapore – the scope of a dependent claim is considered to fall within the scope of a broader independent claim.
When will it be determined
Double patenting will be determined only after a request for examination is filed (rule 2A(1)(d) of the Singapore patent rules). If a double patenting objection is raised during prosecution of a parent application, where the parent and divisional applications are both pending, according to paragraph 6.104 of the Singapore examination guidelines, it is possible to request for the double patenting issue to be addressed in the divisional application when responding to the Written Opinion (aka Examination Report) for the parent application.
Double patenting as a ground for post-grant revocation
Double patenting is a ground for revocation according to Section 80(1)(g) of the Singapore patents act. While it is possible to amend the patent to address the issue of double patenting, under Section 80(5), a granted patent can be revoked in its entirety if the double patenting issue cannot be cured by way of amendments.
The Philippines
Determination of double patenting
Double patenting will be assessed between two or more applications filed by the same applicant whose claims relate to the same invention, according to item 6.3 on pages 134 to 135 of the manual for patent examination procedure (MPEP). This would thus include any applications owned by the same applicant, and which claim the same invention, even if the applications are not linked as a parent and divisional application.
The interpretation of how two claims may be considered to claim the same invention is set out in item 10.6 on pages 198 to 199:
“The parent and divisional applications may not claim the same subject-matter (see IV, 6.4 and e.g. Sec.111 and R.915). This means not only that they must not contain claims of substantially identical scope, but also that one application must not claim the subject-matter claimed in the other, even in different words. The difference between the claimed subject-matter of the two applications must be clearly distinguishable. As a general rule, however, one application may claim its own subject-matter in combination with that of the other application. In other words, if the parent and divisional applications claim separate and distinct elements A and B respectively which function in combination, one of the two applications may also include a claim for A plus B.”
In the event that an applicant files two or more applications covering the same subject matter, the applicant would have the option to try and amend the claims to address the double patenting objection. If unsuccessful, the applicant must choose one application to proceed with examination.
When will it be determined
Based on practical experience, any issues on double patenting are typically raised after a request for examination is filed. However, a double patenting objection may be raised after lodgement of a divisional application, even if a request for examination has not been filed yet.
Double patenting as a ground for post-grant revocation
There are no explicit provisions that state that double patenting is a ground for revocation.
Brunei
Determination of double patenting
Under Section 30(3)(e) of the Brunei patent act, the determination of double patenting will be performed between the claims of two pending applications or granted patents which were filed by the same applicant or his successor in title, and which claims the same priority date and the same invention. Therefore, even applications which are not linked by the same patent family can be assessed for double patenting, as long as the claimed priority date and applicant is the same.
The Brunei patents act does not specifically define how it is determined whether two or more applications relate to the same subject matter. However, based on practical experience, since the Brunei patent office outsources their examiners from the Danish, Hungarian, or Austrian patent offices, it is expected that the approach to double patenting would be the same as those countries. When the examiners at the Danish, Hungarian, or Austrian patent offices examine Brunei patent applications, they often apply the standards for examination as used at the EPO.
When will it be determined
The assessment of double patenting is performed after a request for examination is filed.
Double patenting as a ground for post-grant revocation
Double patenting is a ground for revocation under section 77(1)(g) of the Brunei patents act.
Indonesia
Determination of double patenting
Indonesia does not have explicit provisions which are directed to double patenting. The closest provisions relating to double patenting can be found in article 5, which state that subject matter which was filed in Indonesia prior to the filing and priority date of a later-filed application, cannot be patented in the later application. Such provisions are directed more to the question of novelty than double patenting per se.
Notwithstanding above, based on practical experience, examiners in Indonesia appear to consider the issue of double patenting between a parent and a divisional application. Due to the lack of clear provisions regarding double patenting, the assessment is at the discretion of the examiner. Some examiners may raise a double patenting objection against a divisional application if such an objection was raised in a corresponding application from another jurisdiction. Other examiners would raise a double patenting objection in the following list of non-exhaustive scenarios:
Example 1: If a granted parent patent claims a specific compound encompassed by Markush claims in a divisional application.
Example 2: If all the features in a claim of a granted parent patent are also covered in the claims of a divisional application.
When will it be determined
Despite the lack of explicit provisions regarding double patenting, double patenting objections tend to be raised in a divisional application, after the request for examination is filed. It should be noted that when filing a divisional application, a request for examination needs to be filed at the time of filing of the divisional application.
Double patenting as a ground for post-grant revocation
In line with the lack of clear guidance regarding double patenting, it is also unclear whether double patenting can be a ground for revocation of a granted patent.
Malaysia
Determination of double patenting
Section 30(6) of the Malaysia patents act provide that two or more applications, which are filed by the same applicant or his successor in title, cannot claim the same invention. Accordingly, in addition to parent and divisional applications, this would mean that even applications which are not linked as parent and divisional applications can be considered for double patenting, as long as the applicant is the same.
However, there is no clear guidance on the extent to which claim scopes can overlap before they are considered the same invention.
When will it be determined
Based on practical experience, double patenting objections are raised during examination of a divisional application, particularly if a divisional application was lodged with the same claims as a pending or granted parent application.
Double patenting as a ground for post-grant revocation
There are no clear provisions which state that double patenting is a ground for revocation in Malaysia.
Vietnam
Determination of double patenting
Vietnam operates on a “first-to-file” principle, where article 90 of the Vietnam patents act provides that, where two or more applications are filed for the same or equivalent inventions, a patent will only be granted to an application having the earliest priority date or filing date among the applications that satisfy all protection criteria.
In the event that a parent and divisional application are assessed for potential double patenting issues, the criteria for double patenting is set out in article 24 of the examination guidelines. Article 24 states that double patenting will arise in case the scope of the claims of a first and second application are identical. A partial overlap of claim scope in the sense where a first application claims a product and the second application claims the process of manufacturing the product is allowed. On the other hand, if the claims of a first application refer to a genus and the claims of a second application refer to a species encompassed by the genus of the first application, the scopes would be considered to completely overlap and a double patenting objection will be raised.
When will it be determined
Based on practical experience, we typically encounter double patenting objections during examination of a divisional application.
Double patenting as a ground for post-grant revocation
The grounds for revocation of a patent are set out in article 96 of 2022 amended IP law. One ground for revocation is that the invention does not meet the requirement of the “first-to-file principle”. Accordingly, if a granted divisional patent is found to relate to the same subject matter as the granted parent patent, the divisional application would be considered to not fulfil the “first-to-file” principal and can be invalidated.
Thailand
Determination of double patenting
There are no clear provisions regarding double patenting in Thailand.
It should be noted that in Thailand, divisional applications in Thailand can only be filed if the examiner raises a lack of unity objection, i.e. the patent application refers to different inventions. Each divisional application must be directed to one of the groups of inventions identified by the examiner, and which is not being prosecuted in the parent application. Thus, practically speaking, it is rare, if not impossible, for double patenting issues to arise between a parent and divisional application.
When will it be determined
Notwithstanding the above, for completeness of information, we are of the understanding that any issues of double patenting should arise during substantive examination. As commented above, it is unlikely that a double patenting issue will arise between a parent and a divisional application, as the divisional application can only be filed for an invention which is already considered a separate invention from the parent application. However, it is uncertain how double patenting would be assessed for two applications owned by the same applicant, and which are not linked as parent and divisional applications.
Double patenting as a ground for post-grant revocation
The act does not have clear provisions which state that double patenting is a ground for revocation, although Section 65ter states that a patent and petty patent cannot be filed for the same invention.
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