6.1.2.9 Copending Applications

Also in this Chapter:

• 6.1.2.1 Overview -International Searching
• 6.1.2.2 Overview - International Search Opinion (ISO)
• 6.1.2.3 General Procedures
• 6.1.2.4 Extent of Search
• 6.1.2.5 Minimum Documentation
• 6.1.2.6 Examination Section Procedures
• 6.1.2.7 Searching Examiner
• 6.1.2.8 Other Considerations

Key Legislation:

PCT ISPE Guidelines:

• para 11.10 Copending Applications, Including Those Filed on the Same Date

According to paragraph 11.10 of the PCT International Search and Preliminary Examination Guidelines (Chapter 11, Paragraph 11.10), the PCT does not deal explicitly with the case of co-pending international applications of the same date. However, it is an accepted principle in most patent granting systems that two patents shall not be granted to the same applicant for one invention. It is permissible to allow an applicant to proceed with two international applications having the same description where the claims are quite distinct in scope and directed to different subject matter. However, in the rare case in which there are two or more international applications from the same applicant designating the same State or States and the claims of those applications have the same priority date and relate to the same invention (even though they may not necessarily claim that invention in identical terms), each conflicting application should (as long as it has already been published) be cited in the international search report and identified with a “L” category symbol as raising possible double patenting issues.

In case the conflicting application has not been already published, the examiner should make a note of the situation on the file. Subsequently, if the conflicting application is published before or during International Preliminary Examination, it should be cited in the written opinion and /or the report. A notification, to the applicant alone, is given in the case where their international application designates a state in which they proceed with a national application having the same priority date and relating to the same invention as the said international application, if the examiner is aware of this situation. However, no such notification should be given where two applications (international or otherwise) of the same priority date and relating to the same invention are received from two different applicants.