Double patenting is the issuance of two patents for the same invention, and we most often encounter a similar situation in the pharmaceutical field, since the issue of ensuring competitiveness in the market is significant for pharmaceutical companies. In this regard, certain measures are often taken to ensure conditions for returning funds spent and generating income for the further development of companies.
For example, originating companies can submit several applications for the same pharmacological invention, which is possible since research in the field of pharmaceuticals takes quite a long time, and as the characteristics of a chemical substance are studied, its new properties are discovered, which can then be patented. In this case, initially, as a rule, a general formula is patented, which may include several chemical compounds with identified new characteristics, for each of which an application can subsequently be filed.
In the United States, for example, there is a ban on double patenting, but only in cases where a developer tries to obtain two patents for the same invention, but the second invention is not different from the first (that is, there is no novelty).
In Russia there is a ban in the case of identical (identical) inventions, but the possibility of simultaneous use of inventions under different patents in one product or one method is allowed in accordance with clause 4 of Art. 1358 of the Civil Code of the Russian Federation.
That is, if there is a patent that protects the main substance, and then an application is filed for a substance that is part of what is already patented, but not disclosed in the first patent, a controversial situation is created. However, according to the Guidelines for the Examination of Applications for Inventions, “an invention is considered new if it relates to a new form of a known compound. An invention is considered to meet the condition of novelty if it relates to new derivatives of known compounds formed by interactions other than covalent ones. Such derivatives may include salts, hydrates, solvates, clathrates, complexes, etc.” and if they have new properties in qualitative and quantitative terms in relation to the known substance.
