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23 Jun 2021

European Patent Office, Enlarged Board of Appeal, G 4/19 – Double patenting, decision of June 22, 2021
Reported by Dr. Rudolf Teschemacher, Bardehle Pagenberg

In its decision G 4/19, the Enlarged Board of Appeal (EBA) answers the questions referred in T 318/14, OJ EPO 2020, A104 as follows:

1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been 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 The application can be refused on that legal basis, irrespective of whether it

a) was filed on the same date as, or
b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.

2.2 In view of the answer to Question 2.1 a separate answer is not required.

The EBA confirms the longstanding practice as laid down in the Guidelines for Examination in the EPO (G-IV, 5.4) and the predominant case law, according to which the prohibition of double patenting applies to all applications of the same applicant with the same valid date. The EBA considers the reference in Art. 125 EPC to the principles of procedural law generally recognised in the Contracting States as a possible legal basis for the regulation of double patenting since its prohibition is of a procedural nature, although it has substantive consequences.

However, the EBA has no data available allowing it to safely establish the practice in all or at least the majority of the Contracting States and to confirm the applicability of the prohibition under Article 125 EPC on that basis.

Therefore, in the main part of its decision (B.2), the EBA takes recourse to the history of the EPC in order to establish the intent of the legislator. From the Minutes of the Munich Diplomatic Conference in 1973, in particular from an agreement reached by the majority of Main Committee I (disagreeing: Norway), the EBA concludes that there was a common understanding on the interpretation of Art. 125 EPC with the effect that the EPO should prohibit double patenting.

On this basis, the EBA answers questions 1 and 2.1 in the affirmative. It does not see a need to answer question 2.2 asking whether an applicant has 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.

There may be doubts whether the travaux préparatoires are a proper basis for not addressing question 2.2. There is no indication in the cited documents that the fathers of the Convention had in mind which different situations might be covered by the prohibition of double patenting. Certainly, the concept of an internal priority was not known to everybody at the time. In Germany, it was not introduced until 1980.

A copy of the decision can be read here.