T 2907/19 - Double patenting and dependent claims

Key points

•  The Board allows an appeal against a refusal decision.
• The Board assess whether there is impermissible double patenting: "According to the headnotes of G 4/19, 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. " 
• "The definition of "the same subject-matter was not subject of the referral and of decision G 4/19"
• "the present application is a divisional application of parent European application No. 06 803 439. European patent EP 1 935 007 B1 was granted for the parent application."
• "Claim 1 of according to the [operative] fifth auxiliary request differs from claim 1 of patent EP 1 935 007 by the step of separating the epitaxial layer from the carrier substrate."
• "Hence, independent claim 1 of the fifth auxiliary request is different from independent claim 1 of the granted parent application and thus does not define the same subject-matter. Hence, the prohibition of double patenting is not pertinent to the claims of the fifth auxiliary request. This is not precluded by the fact that claim 1 of the fifth auxiliary request corresponds to dependent claim 2 of the granted parent application."
• Hence, current claim 1 is narrower than already granted claim 1 and "corresponds to dependent claim 2 of the granted parent application" but that is no problem.
• As a comment, it appears that only the independent claims are relevant for G 4/19.
• As a further comment, this decision is of great practical value for the case that "The applicant may, for example, be interested in obtaining a first quicker protection for a preferred embodiment and pursue the general teaching in a divisional application. ... It is sufficient to say that such procedural behaviour is not abusive and even legitimate. "  G 2/10, r. 4.5.5.  The patentee can now let the patent lapse that was granted on the parent with narrow (but strong) claims lapse after the grant of the patent on the divisional with both the broad claims and, as dependent claims and fallback position (G 3/14), the same narrower claims.

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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/t192907eu1.html

11.7 In view of the above, the board is convinced that the subject-matter of claim 1 according to the fifth auxiliary request involves an inventive step (Article 52(1) and Article 56 EPC 1973) over the state of the art documents at hand.

12. Double patenting

12.1 According to the headnotes of G 4/19, 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. 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.

The definition of "the same subject-matter was not subject of the referral and of decision G 4/19, see Reasons, points 3, 15 and 16.

12.2 As pointed out before, the present application is a divisional application of parent European application No. 06 803 439. European patent EP 1 935 007 B1 was granted for the parent application.

Claim 1 of according to the fifth auxiliary request differs from claim 1 of patent EP 1 935 007 by the step of separating the epitaxial layer from the carrier substrate.

Hence, independent claim 1 of the fifth auxiliary request is different from independent claim 1 of the granted parent application and thus does not define the same subject-matter. Hence, the prohibition of double patenting is not pertinent to the claims of the fifth auxiliary request. This is not precluded by the fact that claim 1 of the fifth auxiliary request corresponds to dependent claim 2 of the granted parent application.