T 1128/19 - Double patenting

Key points

• "In the decision under appeal, the examining division held that the main request and auxiliary requests 1 to 3 were not allowable under Article 97(2) EPC together with Article 125 EPC, since they were in contravention of the principle of prohibition of double patenting with respect to the patent [...] granted on the parent application []"
• "Amgen Research (Munich) GmbH is the proprietor of both the granted parent and of the (divisional) application under appeal. Thus, the parent patent was granted to the same applicant as the applicant of the application under appeal."
• Under G 4/19 " it must further be determined whether "it claims the same subject-matter as a European patent which has been granted to the same applicant"."
• "claim 1 of the main request is a combination of claims 1 and 4 and a single embodiment (aa) from claim 5 of the granted patent."
• "The wording of claim 1 of the application under appeal [also] differs from that of the above mentioned claims of the patent in that it specifies that the first binding domain "is an antigen-interaction site"; but this difference in wording is no further discussed in the decision.
• "the subject-matter of claim 1 of the main request is an explicit alternative defined in the claims of the parent patent, being a combination the claim 1 and 4 and embodiment (aa) of claim 5 as granted."
• "The main request and auxiliary requests 1 are not allowable in view of the prohibition of double patenting because they claim the same subject-matter as claimed in the parent patent."
• As a comment, see the different analysis in T 2907/19, which allowed the patent to be granted with a claim 1 that "corresponds to dependent claim 2 of the granted parent application"
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EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t191128eu1.html

Double patenting

Main request and auxiliary requests 1 to 3 - claim 1

2. In the decision under appeal, the examining division held that the main request and auxiliary requests 1 to 3 were not allowable under Article 97(2) EPC together with Article 125 EPC, since they were in contravention of the principle of prohibition of double patenting with respect to the patent, EP 2 356 153, granted on the parent application, EP 09 783 664.7.

3. In its appeal, the appellant challenged the legal basis in the EPC for the principle of prohibition of double patenting, either explicitly or implicitly by way of reference to national law (Article 125 EPC) for a prohibition of double patenting. In view of this the appellant proposed questions to be referred to the Enlarged Board of Appeal in this issue. However, since the filing of the appeal, the Enlarged Board of Appeal (EPA) issued decision G 4/19, which renders the questions proposed by the appellant moot. In this decision, the EBA held that -

"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. 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".

4. As noted in Section I. above, European patent EP 2 356 153 is the parent of the application under appeal. Amgen Research (Munich) GmbH is the proprietor of both the granted parent and of the (divisional) application under appeal. Thus, the parent patent was granted to the same applicant as the applicant of the application under appeal.

5. To decide if the application under appeal was correctly refused because it contravenes the principle of prohibition of double patenting, it must further be determined whether "it claims the same subject-matter as a European patent which has been granted to the same applicant".

6. As noted in the decision under appeal (see point 15.1), claim 1 of the main request is a combination of claims 1 and 4 and a single embodiment (aa) from claim 5 of the granted patent. The wording of claim 1 of the application under appeal differs from that of the above mentioned claims of the patent in that it specifies that the first binding domain "is an antigen-interaction site".

7. As also noted in the decision under appeal, the subject-matter of claim 1 of the main request is an explicit alternative defined in the claims of the parent patent, being a combination the claim 1 and 4 and embodiment (aa) of claim 5 as granted.

8. The appellant was of the view that claim 1 of the main request relates to an antibody whereas claim 1 of the granted parent is not defined to be an antibody. In other words, the subject-matter of claim 1 was alleged to be a narrower selection from the subject-matter of claim 1 of the parent patent.

9. This argument is not convincing because the claim is for "a bispecific single chain antibody molecule". There is no technical reason to differentiate between an antibody and an antibody molecule, since it goes without saying that an antibody is a molecule.

10. The main request and auxiliary requests 1 are not allowable in view of the prohibition of double patenting because they claim the same subject-matter as claimed in the parent patent.