- The Board refers question to the Enlarged Board about double patenting. The questions were already announced during the oral proceedings of 07.02.2019, see here. The Board has now issued the written decision to refer the questions.
- The questions are stated below. The more important thing is the extensive legal analysis of the Technical Board of Appeal, which stops shortly before concluding that there is no legal basis in the EPC for a prohibiting double patenting.
- "The main conclusions by the [Technical Board of Appeal] can be summarised as follows:
- - There is no express provision in the EPC which prohibits double patenting.
- - It is not clear whether such a prohibition became an implicit part of the Convention by way of an agreed statement or similar instrument adopted at the Munich Diplomatic Conference.
- The legislator did not introduce an express prohibition on double patenting at the Diplomatic Conference for the revision of the EPC in 2000. Article 139(3) EPC remained unchanged. - - A prohibition on double patenting cannot be based on Article 60(1) EPC.
- Neither Article 63(1) EPC nor Article 76(1) EPC offers scope for the idea of a prohibition on double patenting.
- It is questionable whether Article 125 EPC is appropriate as a legal basis for a prohibition on double patenting. This provision cannot serve to introduce a new condition for patentability (or a ground for refusal). [...] - - If a prohibition on double patenting with respect to European patent applications may be introduced at all, this could be by way of case law filling an unintended gap in the law.
- However, in view of the policy considerations involved, it appears that a proper legislative procedure would offer a more favourable context for establishing a sound legal basis for a prohibition on double patenting."
The following questions are 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 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
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 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?
EPO T 0318/14 - T0318/14 - link
File wrapper here
EPO G4/19 Double patenting
EPO G 4/19 Double patenting
EPO G 0004/19 Double patenting
EPO G0004/19 Double patenting
Note the case number was confirmed on 16.01.2020 (link).
Summary of Facts and Submissions
I. This appeal is against the decision of the examining division by which European patent application No 10718590.2, based on an international application published as WO 2010/130661, was refused under Article 97(2) EPC "in conjunction with Article 125 EPC".
II. The examining division found that claim 1 of the sole claim request on file was directed to subject-matter which was "100% identical" to the subject-matter claimed in European patent No 2 251 021, which was granted on European patent application No 09159932.4, the priority document of the present application. This was held to be contrary to the principle of the prohibition on double patenting referred to in decisions G 1/05 and G 1/06.
