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EPO – Enlarged Board of Appeal asked to decide on the legal basis for and the scope of the prohibition of double patenting

20 Dec 2019

European Patent Office, Technical Board of Appeal 3.3.01, T 318/14, decision of February 7, 2019, reported by Dr. Rudolf Teschemacher, Bardehle Pagenberg

In decisions G 1/05 and G 1/06, the Enlarged Board of Appel (EBA) accepted that the principle of the prohibition of double patenting exists on the basis that an applicant has no legitimate interest in the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor and found nothing objectionable in the established practice of the EPO that this principle applies in the relation between parent and divisional application.

Technical Board of Appeal 3.3.01 was faced with a case involving a European application claiming the priority of a first European application on which the patent had already been granted. The claims of the pending application are identical to the subject-matter claimed in the patent granted on the previous application. The Board took the opportunity to make a referral to the EBA.

The questions posed are not restricted to the specific situation of an internal priority for which the applicant had argued that the there is a legitimate interest in a longer term of protection resulting from the later filing date of the application claiming priority. Rather, they also specifically address the situation of parent and divisional applications on which the EBA has already expressed its opinion in G 1/05 and G 1/06 and the situation of parallel applications filed by the same applicant on the same date to which the approach accepted in these decisions applies a fortiori.

The scope of the questions might have the consequence that, applying the Guidelines for Examination E-VII, 3, grant proceedings will be stayed in cases for which there seemed to be a safe basis that the prohibition of double patenting applies.

The referred questions read:

1. Can a European patent application be refused under Article 97(2) EPC if it claims the same subject-matter as a European patent which was granted to the same applicant and 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 depending on whether 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 last of these cases, does an applicant have a legitimate interest in the grant of a patent on 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?