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Double patenting at the EPO: What’s new?

26 · 02 · 19 - IP News - ABG-IP

Double patenting refers to a situation in which an applicant tries to obtain two or more separate patents that claim the same subject matter.

The Guidelines for Examination in the EPO state that “it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention” (see G, IV, 5.4) and, although prohibition against double-patenting has no explicit legal basis in the European Patent Convention (EPC), in practice EPO’s examiners tend to follow the principles set out in decisions G 1/05 and G 1/06, in which the Enlarged Board of Appeal decided that double patenting should be prohibited because the applicant “had no legitimate interest in proceedings that gave rise to the grant of a second patent in respect of the same subject-matter for which he already held a patent”.

The prohibition of double patenting may apply to three types of combinations of European applications by the same applicant: two applications filed on the same day, parent and divisional applications, or an application and its priority application.

The EPO’s boards of appeal have dealt with the above situations in several occasions, resulting in contradictory rulings. For instance, regarding the third scenario, in T 1423/07 the board noted that double patenting was not prohibited for European applications claiming a European priority because of the applicant’s clear legitimate interest in the longer term of protection possibly available with the later filing, in view of the fact that the filing date and not the priority date was the relevant date for calculating the 20-year term of the patent. By contrast, in T307/03 it was held that Article 60 EPC (i.e. considering the inventor’s right to a European patent as the right to one and only one European patent) prevents double patenting even in cases of internal priority.

In light of these divergent positions, we are pleased to see that the technical board of appeal in T 0318/14 has now referred the following questions to the Enlarged Board of Appeal (EBA) (minutes here):

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent granted to the same applicant which does not form part of the state of the art pursuant to Article 54(2) and (3) EPC?

2.1.  If the answer to the first question is yes, what are the conditions for such a refusal and are different conditions to be applied where the European patent application under examination was filed

a) on the same date as, or

b) as a European divisional application (Article 76(1) EPC) in respect of, or

c) claiming the priority (Article 88 EPC) in respect of

a European patent application on the basis of which a European patent was granted to the same applicant?

2.2. In particular, in the latter case, does an applicant have a legitimate interest in the grant of the (subsequent) European patent application in view of the fact that the filing date and not the priority date is the relevant date for calculating the term of the European patent under Article 63(1) EPC?

The decision from the EBA is awaited with much interest. ABG-IP will keep you informed of any developments as to the progress of the case.

As always, if you are interested in more details about this matter, we encourage you to contact us.

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