The term “double patenting” is sometimes used to describe a situation where two patents exist simultaneously on the Register of Patents, whose specifications include one or more claims that define the same invention, and for which the inventors and the priority dates are the same. This kind of situation is uncommon, where standard patents are concerned, because the effect of s64 of the Patents Act 1990 is to prohibit the Commissioner of Patents from sealing a standard patent when there already exists on the Register of Patents a patent that (a) claims the same invention, and (b) the invention is made by the same inventor(s) and (c) the relevant claims have the same priority date(s).
Until now, it has been an open question as to the status of a standard patent that has been sealed but should not have been sealed because of the effect of s 64. That issue came before Emmett J recently in Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302, in which Spruson & Ferguson Lawyers acted for the Applicant, Arbitron Inc (“Arbitron”).
In this case, Arbitron alleged infringement of three of its patents by the Respondent, Telecontrol Aktiengesellschaft (“Telecontrol”). The patents are related in that the last to be granted (“the Patent”) is a divisional of one of the others, which is itself a divisional of the first to have been applied for (“the Grandparent”). The inventors for the Patent and the Grandparent are the same. Telecontrol asserted, inter alia, that the Patent claims the same invention as the Grandparent and therefore should not have been sealed because of s 64. Telecontrol further submitted that, as a result of its having been sealed in contravention of s64, the Patent should be revoked on the ground that Arbitron was not entitled to the Patent, and/or the Register should be rectified by removal of the Patent from it.
Emmett J considered that although the relevant claims of the two patents are not identically worded, the invention claimed in the Patent is the same as an invention that is the subject of the Grandparent. However, his Honour considered that it did not follow that Arbitron was not “entitled” to the Patent. Accordingly, the Patent was held not to be liable to revocation on that ground. Emmett J went on to consider the issue of the Patent remaining on the Register of Patents, and held that, once the Commissioner had sealed the Patent, particulars of it were required to be entered in the Register by virtue of s61 of the Patents Act. Accordingly, his Honour held that particulars of the Patent do not wrongly exist in the Register and there was therefore no basis for removal of particulars of the Patent.
This case provides more certainty to patentees that a standard patent, once sealed, is not open to revocation or removal from the Register on the basis of “double patenting”. It does not, however, change the requirement for the Commissioner not to seal a standard patent if to do so would give rise to a double patenting situation. Arbitron v Telecontrol also does not change the Commissioner’s power, with regard to innovation patents under s 101B(6), to revoke an innovation patent that claims an invention that is the same as an invention that is the subject of a patent and is made by the same inventor, and the relevant claim or claims have the same priority date or dates.