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:

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

Related Chapters:

• RIO - Creating case notes

On this Page

• General considerations for Co-pending Applications

• Examiner actions during International Preliminary Examination

General considerations for co-pending applications

The PCT does not deal explicitly with the case of co-pending international applications of the same date, according to paragraph 11.10 of the PCT International Search and Preliminary Examination Guidelines (Chapter 11, Paragraph 11.10). However, most patent granting jurisdictions will not grant two patents to the same applicant for one invention.

At the PCT stage, 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, there is the rare case in which:

• Two or more international applications are from the same applicant and designating the same State or States.

• 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).

In such a case, 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 (see 6.1.12.5.2 Citation Category).

Examiner actions during International Preliminary Examination

When 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.

Examiners should notify the applicant (alone) 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). No such notification is needed when two applications (international or otherwise) of the same priority date and relating to the same invention are received from two different applicants.