Double patenting in the USA and Europe

An Expert View from Jonathan Roses (pictured, left), counsel, Wolf, Greenfield & Sacks, and Matthew Birkett, partner, Hoffmann Eitle, on the granting of two patents for a single invention in the USA and Europe.

Patent applications for life sciences companies tend to include disclosures that support claims to a variety of subject matter, such as compositions of matter, methods of use, methods of preparation, and kits. While some applications may result in the grant of a single patent that includes claims covering all disclosed subject matter, it is more common for applicants to be required to file multiple applications to cover all the subject matter for which protection is desired.

In addition, applicants may pursue similar subject matter in patent applications that are unrelated (ie with different effective filing dates). In either situation, a conflict between an applicant’s patents and applications can give rise to “double patenting” rejections that can hamper prosecution, result in loss of a portion of patent term, or even revocation of the patent right altogether.