15 June 2010

Double Patenting - impermissible, but not invalidating

Arbitron v Telecontrol Aktiengesellschaft [2010] FCA 302 (31 March 2010)

Summary: While it is technically impermissible under the Australian Patents Act 1990 for two patents to be granted to the same patentee in respect of the same invention, in the event that this should occur it is not fatal to the validity of either patent.

In this recent Australian case, Arbitron, Inc ("Arbitron") contended that Telecontrol Aktiengesellschaft ("Telecontrol") infringed Arbitron's Australian Patent No. 747044, relating to its "Portable People Meter" (PPM) technology.

Right: "No!!! I said portable people meter!"
The claims of the patent relate to a method of encoding a "signature" within the spectrum of an audio signal, which can then be decoded by a digital signal processor in a small battery operated device, that can be carried around by a ratings survey subject.  Or, in lay terms, a way of hiding a "secret code" in sound (such as radio or television broadcasts) that a clever electronic device can detect, but that is generally inaudible to people.  The idea is that when the portable meter detects a specific signature, it can then record the fact that the survey subject is listening to (or at least is in earshot of) a corresponding broadcast program.

Enough of that -- we are not presently concerned with the technology.  Suffice to say that, in the end, the Judge (Emmett J) concluded that the evidence did not establish infringement by Telecontrol.


The aspect of the case that Patentology finds interesting relates to contentions by Telecontrol that Arbitron's patent should be revoked under s138(3)(a) of the Patents Act 1990, on the ground that Arbitron was not entitled to the patent, or (in the alternative) that the Register of Patents should be rectified by removal of the patent under s192(1) on the basis that it was wrongly registered.  Both of these contentions were based on alleged "double patenting" by Arbitron.

Double patenting, ie the grant of two or more patents to the same inventor(s) having claims to the "same invention", is prohibited by s64(2) of the Act.  Specifically, the Act specifies that a patent "cannot be granted on the [second] application."

The Arbitron patent in this case was a divisional application, derived from an earlier divisional (the parent) of an original application (the grandparent), the latter being previously granted as Australian Patent No. 678163.  Claims 1 to 4 of the patent-in-suit were -- Telecontrol contended, and the Judge agreed -- directed to the "same invention" as claims 17 to 20 of the grandparent, despite some modifications to the specific language used.

It follows that what "cannot be" (according to s64(2)) indeed was!  This created something of a legal, and indeed perhaps existential, quandary.


However, Emmett J concluded that the existence of a second patent claiming the same invention as an earlier patent, and which thus should not have been granted in the first place, was not invalid under s138(3)(a).  His Honour reasoned that the policy behind the prohibition on double patenting was primarily to avoid public confusion but that, aside from this, there are no significant undesirable consequences should it occur.  Under Australian law, by definition both patents must have the same expiry date (since they must have the same filing date to fall within the provisions of s64).  The patentee is therefore afforded no additional monopoly rights by virtue of holding a second patent covering the same invention as the first.

His Honour also pointed out that "entitlement" under s138(3)(a) is concerned with the entitlement in relation to the invention (ie the patentee's basis for ownership of the rights, such as assignment from the original inventors), not entitlement in relation to a grant.  Telecontrol therefore misconstrued the provision in its contentions.

Regarding rectification of the Register under s192(1), Emmett J similarly concluded that there was no basis for him to order removal of the patent.  In particular, His Honour found that "[i]t is the sealing of the patent that creates the rights of the patentee, not the entry of the consequences of sealing in the Register. ... Even if a patent is sealed in contravention of s 64(2), it is nonetheless sealed and the Commissioner is therefore obliged to register particulars of it in the Register."  Thus removing the details of the patent from the Register has no effect on the rights of the patentee, and indeed would be inappropriate because the Register would then not provide an accurate record of the extant rights.


It is interesting to compare the rather forgiving nature of the Australian law in relation to double patenting (or "double claiming", as it is known in some jurisdictions) with the approach taken by some of Australia's major trading partners.  A recent Canadian case (Merck v. Pharmascience 2010 FC 510, discussed here, for example) was one in which the claim at issue was found invalid on double patenting grounds.  It is our understanding that the US law is equally unforgiving.

However, we suspect that this discrepancy arises from a range of differences in the respective laws.  If the facts in the Canadian case mentioned above were transposed to Australia, for example, it is likely that the later patent would have been found invalid on the comparable ground of lack of novelty, under the "whole of contents" provisions of the Australian Act. 

We propose to take up a discussion of these comparative issues in a subsequent article.

Unrelated topic: Purple People Eater


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