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EPO – Enlarged Board of Appeal asked to define the scope of the prohibition of double patenting

28 Feb 2019


EPO, Technical Board of Appeal 3.3.01, T 318/14, decision of February 7, 2019

Reported by Dr. Rudolf Teschemacher, Bardehle Pagenberg

In the oral proceedings of February 7, 2019, Technical Board of Appeal 3.3.01 decided to refer the following point of law to the Enlarged Board of Appeal (EBA):

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 written decision has not yet been issued. The content of the electronic file reveals that the applicant’s case is about an internal priority, i.e. the relation between a patent granted on a first European application and a second European application claiming priority from the first one, both claiming identical subject-matter.

In its communication preparing the oral proceedings, the Board analyzed the previous case law and some divergencies existing therein. In cases G 1/05 and G 1/06, the EBA had dealt with the prohibition of double patenting, based on the principle that there is no legitimate interest in having a second patent granted on identical subject-matter, and had found nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent.

In this respect, the communication of Board 3.3.01 raised the question whether the three situations addressed in pt. 2.1 a), b) and c) of the question referred to the EBA have to be treated differently, in particular in view of the fact that the term of the patent to be granted on the application claiming priority runs from its own filing date and thereby exceeds the term of the patent granted on the priority application, see pt. 2.2 of the question referred to the EBA.

A copy of the electronic file can be accessed here.