Concept and definition of double invention
Als Double invention in legal doctrine, refers to an invention that is created simultaneously or nearly simultaneously by two or more independent inventors. The legal issue of double invention primarily concerns patent law, as it is based on the principles of territoriality and priority. In numerous legal systems, the question arises as to the legal consequences of a double invention and which person is entitled to protection of industrial property, particularly the right to file and ultimately obtain a patent.
Legal foundations of double invention
Double invention under German patent law
German patent law determines double invention through various provisions. According to Section 6 of the Patent Act (PatG), the right to the patent belongs to the inventor or their legal successor. The decisive factor is who filed the invention first (priority principle, § 41 PatG). The filing date determines the award of the patent right. If the patent office or a court subsequently finds that an identical invention stems from two independent applications, only the first applicant, provided all substantive and formal patent law requirements are met, will be granted the patent.
Legal consequences of identical inventions
If a double invention occurs, the later applicant cannot obtain patent protection over the first application because the invention is already considered prior art (§ 3 PatG). A later application is therefore typically rejected or deleted, as the requirement of novelty is no longer fulfilled.
Double invention and the priority principle
The so-called priority principle is internationally recognized, among others through the Paris Convention for the Protection of Industrial Property. According to this principle, priority is given to whoever first files an application with the relevant patent office. The decisive factor is always the date of receipt of the application. Therefore, a double invention is not decided by the actual act of invention, but by the filing date.
U.S. law: First to invent vs. first to file
Historically, U.S. patent law distinguished between the ‘first-to-invent’ and ‘first-to-file’ systems. Until 2013, the ‘first-to-invent’ principle applied, meaning the actual inventor had priority, even if they filed later. With the introduction of the America Invents Act (AIA) in 2013, the ‘first-to-file’ system was adopted in the USA as well, so that the principle of priority is now largely harmonized globally. As a result, double inventions are also regularly decided in favor of the first applicant in the USA.
Double invention in international patent law
Uniform rules through international conventions
International conventions, such as the European Patent Convention (EPC) and the aforementioned Paris Convention, provide a uniform framework for the handling of double inventions. Under the European Patent Convention, too, the right to the patent lies with the person who first files the invention (Art. 60 EPC). This excludes multiple or double grants of identical patents for the same subject matter.
Protective mechanisms and legal remedies
If a double invention is determined during patent granting, European patent law provides various mechanisms. For example, an opposition can be filed during the opposition period (§§ 59-61 PatG, Art. 99 ff. EPC) against the grant of a patent due to lack of novelty as a result of an earlier application for the same subject matter. Furthermore, nullity proceedings (Art. 138 EPC) can lead to a wrongly granted patent being revoked due to double invention.
Double invention and employee inventions
A special feature arises in the case of employee inventions. If an employee files an invention identical to another application within the company or the competitive environment, internal company organisation regarding internal notifications and priorities is decisive. The Employee Inventions Act (ArbEG) regulates these cases and determines when and how the right to a double invention is allocated between several employees of the same company.
Double invention in relation to protection rights
Relationship to utility models and other industrial property rights
Analogous to a double invention in patent law, double inventions can also occur in the case of utility models and other protection rights, such as design protection. Here too, the filing date generally determines the scope of protection, with the relevant special legal provisions being decisive in each case.
Effects on scope of protection and incentive to innovate
A double invention can result in one applicant being left without protection in their application for proprietary rights, as the invention is already part of the prior art due to the existing identical application. This underlines the high importance of promptly filing innovative inventions and innovations.
Legal disputes and special case constellations
Multiple applications from the same research group
If several members of a research group independently file the same invention, the rules regarding invention disclosure and priorities determine who is considered the entitled applicant. Internal organisational and project-specific agreements as well as, where applicable, employment law arrangements are decisive here.
Effects of disclosures and prior use
A double invention is also affected with regard to novelty by rights of prior use (§ 12 PatG). Inventions made available to the public, such as through scientific publications or public use, may result in later applications no longer being considered new, even if they also constitute independent inventions.
Summary and significance
Double invention is a central topic of industrial property protection, and especially patent law. It raises numerous legal and practical questions regarding the granting and priority of protection rights. The ‘first to file’ principle is now the decisive standard internationally and determines the allocation of patent rights in cases of double invention. Nevertheless, scenarios concerning employee inventions, prior user rights, and disclosures remain significant and require careful legal assessment. Effectively securing one’s own invention through prompt application is therefore of utmost importance for obtaining protection rights.
Frequently Asked Questions
What legal consequences may arise in the case of a double invention?
In the case of a double invention – that is, when two parties independently claim the same invention – there are serious legal consequences, especially in patent law. Depending on domestic or international legal regulations, only one individual or company can be considered the entitled applicant for the patent — namely, whichever files first (the so-called ‘first-to-file’ principle, for example, in European patent law). If a party attempts to patent an invention already registered for protection, this regularly results in rejection or revocation of the second application. If it is proven that the double invention application was filed with knowledge of the pre-existing application and with intent to deceive, civil claims for damages or even criminal consequences may follow, depending on the allegation of misconduct.
How can a double invention be detected in the legal application process?
The identification of a double invention is ensured by the patent office through formal and substantive examinations. During the novelty examination, targeted searches are conducted for identical or highly similar existing applications. Both national and international patent registers and relevant databases are used. Applications or patents that have already been published can thus be determined as prior art and draw attention to any later identical application. Technical examiners are also responsible for identifying overlaps and, where appropriate, informing parties of parallel rights.
Who has the superior right to grant of the patent in the event of a dispute?
According to German and European patent law, the ‘first-to-file’ principle generally applies, whereby the person who first files the invention is granted the protection right. However, an opposition procedure may be initiated if the second applicant can prove they were actually the original inventor and that the invention was unlawfully disclosed and misappropriated. In countries where the ‘first-to-invent’ principle applied (e.g., the USA in the past), the actual inventor could claim priority if this could be proven. Usually, the relevant patent office or a court resolves open disputes relating to double inventions.
What legal remedies are available in the case of unintentional double invention?
If a double invention occurred unintentionally and there is no evidence of improper conduct, the affected applicant may attempt to proceed with the application process by amending or limiting the patent claim. Switching to utility model protection is also possible, provided the requirements are met. If the applicant is in fact affected by a double invention, in some cases it may be possible to reach a licensing agreement with the original applicant or to enter a cooperative relationship to jointly benefit from the invention.
How are double inventions handled in ongoing German patent proceedings?
In German patent law, a double invention is identified at the latest during the search and substantive examination by the German Patent and Trade Mark Office (DPMA). If an identical patent already exists, the application is rejected as unpatentable. The parties may, in a separate procedure, such as during opposition proceedings, present their arguments and priorities. If there are substantiated suspicions of a legal violation or unlawful appropriation, a nullity procedure can be initiated to finally clarify the legal situation regarding the protection right.
What is the international relevance of double inventions, especially in the PCT procedure?
Within the Patent Cooperation Treaty (PCT) procedure, a double invention is examined at the international level. This prevents two applications from different countries from claiming protection for the same inventive content. The international searching authority independently examines whether the same subject matter is already protected by another PCT application or a national application. If it is proven that a double invention exists, the right to protection is determined at the latest in the national or regional phase. Thus, the priority rule is particularly important in the international context, and the earliest properly filed application generally takes precedence.
