T 0318/14 - The details of double patenting

 Key points

•  This is the follow up to G 4/19 about Double Patenting.
• The subject-matter of the claims is the same as that of a granted European patent.
• The Technical Board of Appeal, still in the appeal against a refusal decision: “ in its decision G 4/19 the Enlarged Board of Appeal did not address the requirements relating to the "same applicant" and the "same application"* since this issue was not considered to be covered by the referral, see G 4/19, points 7 and 16).” *: probably "same invention" was intended.
• The TBA: “Moreover, no request for limitation or revocation (Article 105a EPC) is pending in respect of [the already granted] European patent”
• This is quite interesting.
• “The patentee of European patent No. 2251021 was Nestec S.A. The same company filed European patent application No. 10718590.2 under consideration in the present appeal. Nestec S.A. merged with Société des Produits Nestlé S.A. with effect from 27 May 2019. As a result of the merger, Nestec S.A. ceased to exist and was removed from the companies register. By way of universal succession, Société des Produits Nestlé S.A. became the proprietor of European patent No. 2251021 and of the contested European patent application No. 10718590.2. Thus, the requirement of "same applicant" is fulfilled.”
• In the EPO register, the applicant is as of date shown as Nestle SA and the patentee as Nestec S.A.

T 0318/14

https://www.epo.org/law-practice/case-law-appeals/recent/t140318eu2.html

Reasons for the Decision

1. A refusal based on the prohibition on double patenting presupposes that the applicant of a European patent application has already been granted an identical European patent (decisions G 1/05 and G 1/06, OJ EPO 2008, 271 and 307, point 13.4); in its decision G 4/19 the Enlarged Board of Appeal did not address the requirements relating to the "same applicant" and the "same application" since this issue was not considered to be covered by the referral, see G 4/19, points 7 and 16).

2. The subject-matter of the claims currently on file and on which the examining division based its refusal of European patent application No 10718590.2 (i.e. claims 1 to 9 of the main request re-submitted with the statement of grounds of appeal) is identical to the subject-matter of the claims of European patent No. 2251021, which was granted on the basis of European patent application No. 09159932.4, the priority document of the present application. Moreover, no request for limitation or revocation (Article 105a EPC) is pending in respect of European patent No. 2251021. The requirement of identical subject-matter is therefore fulfilled.

3. The patentee of European patent No. 2251021 was Nestec S.A. The same company filed European patent application No. 10718590.2 under consideration in the present appeal. Nestec S.A. merged with Société des Produits Nestlé S.A. with effect from 27 May 2019. As a result of the merger, Nestec S.A. ceased to exist and was removed from the companies register. By way of universal succession, Société des Produits Nestlé S.A. became the proprietor of European patent No. 2251021 and of the contested European patent application No. 10718590.2. Thus, the requirement of "same applicant" is fulfilled.

4. In the light of decision G 4/19 (point 2.1c) of the Order) and the observations above, the examining division's refusal of European patent application No. 10718590.2 under Articles 97(2) and 125 EPC was justified. The appeal is therefore to be dismissed and the request for reimbursement of the appeal fee under Rule 103(1)(a) EPC on the grounds of a contravention of the rule of law (see the statement of grounds of appeal, page 10, point 4) is to be refused.

Order

For these reasons it is decided that:

1. The appeal is dismissed.

2. The request for reimbursement of the appeal fee is refused.