Questions Concerning Double Patenting Referred to the Enlarged Board of Appeal

26 February 2019

The Board of Appeal in case T0318/14 has indicated in the minutes of oral proceedings held on 7 February 2019 that the following questions concerning double patenting are being referred to the Enlarged Board of Appeal.

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?

T0318/14 is an appeal against an examining division decision to reject a European patent application.  The examining division rejected the European patent application on the basis that it claimed “100% identical” subject matter to its already-granted European priority application, and referred to earlier Enlarged Board of Appeal decisions G1/05 and G1/06 in its reasoning.  Interestingly, there is no statutory prohibition on double patenting under the EPC.  The legal basis for rejecting applications on the basis of double patenting is entirely judge-made, and is open to significant criticism.

G1/05, G1/06 and the subsequent case law of the Boards of Appeal are discussed in more detail our briefing here.  However, of particular relevance to T0318/14 was the statement by the Enlarged Board of Appeal in G1/05 that “the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter”.  This suggests that there are circumstances under which the applicant does have a “legitimate interest” in being granted multiple patents for the same subject-matter.

The appellant in T0318/14 argued that it did indeed have a legitimate interest, on the basis that the twenty-year term of a patent is calculated from its filing date and not its priority date.  Accordingly, the expiry date of the refused patent application would be later than that of its already-granted priority application, and this additional patent term represents a legitimate reason for the patent being granted despite the existence of the already-granted priority application. 

The Board of Appeal has not yet issued its written decision, but in a communication issued prior to the oral proceedings indicated that “there is no uniform practice and even conflicting case law on the question of whether and to what extent double patenting is prohibited”.  It is presumably on this basis that the Board of Appeal decided that it was necessary to refer the questions set out above to the Enlarged Board of Appeal, with question 2.2 relating specifically to the factual situation in T0318/14. 

Although the Enlarged Board of Appeal may decide to confine its decision to answering question 2.2 above, it may additionally decide to address the issues of what constitutes a “legitimate interest” more generally and/or what is meant by “the same subject-matter”.  

A decision is expected in around 18 months, and we will report again when there is any further news.

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