Enlarged Board to clarify European Patent Office approach to double patenting

Europe

The European Patent Office Technical Board of Appeal has referred three legal questions to the Enlarged Board of Appeal. These questions concern the allowability of double patenting at the EPO, and will be answered in pending referral G 4/19.

What is double patenting?

Double patenting is the term used to describe an applicant claiming an identical invention in two (or more) patents covering the same territory, e.g. having identical claims in two European patents. This can arise when an applicant claims identical subject matter in a parent application and a divisional, when an applicant claims identical subject matter in two applications filed on the same day, or when an applicant claims identical subject matter in a priority founding application and a subsequent application claiming priority to the earlier application (as was the case in the present matter).

There are no provisions within the European Patent Convention (EPC) prohibiting double patenting. However, the Enlarged Board has, in previous cases G 1/05 and G 1/06, accepted that there should be a prohibition on double patenting based on the notion that an applicant has no "legitimate interest" in proceedings leading to the grant of a second patent if they already possess a granted patent for the same subject matter.

Background to the case

In the present dispute, a European patent application was filed in 2010, claiming priority to an earlier European patent application filed in 2009. The priority application proceeded to grant. The Examining Division subsequently refused grant of the later application on the grounds that the claimed subject matter was identical to the subject matter claimed by the patent granted from the priority application.

In appealing the decision, the applicant argued that (i) there is no principle of law recognised by EPC Contracting States prohibiting double patenting; (ii) if double patenting arises from internal priority (i.e. claiming priority for an EP application from an earlier EP application), the applicant has a "legitimate interest" in the grant of both applications according to G 1/05 and G 1/06 since the filing date (not the priority date) is the relevant date for the 20-year patent term.

As such, the applicant argued that they should be allowed both patents since one will expire in 2029, whereas the other will expire in 2030. An additional year of protection is extremely desirable in many technical areas, particularly pharmaceuticals where the value of a patent typically increases year on year.

G 4/19

In the pending referral, the Enlarged Board will answer the following questions:

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

  1. on the same date as, or
  2. as a European divisional application (Article 76(1) EPC) in respect of, or
  3. 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?

The Enlarged Board's answers to these questions are expected this year and will greatly help applicants who wish to extend protection of their invention as much as possible.