T 0779/24 - Double patenting in opposition

Key points

• How to deal with double patenting (G 4/19) in opposition? In the same manner as clarity (G 3/14), according to this decision.
• "2. ... opponent 8 maintained their objection of double patenting under Article 125 EPC raised during the opposition proceedings, because claim 1 of the main request would be identical in scope with claim 1 of the patent EP 3 744 326, filed as a divisional application of the present patent and granted on 6 December 2023. 
• In the impugned decision, the opposition division considered that double patenting was not a ground of opposition and that the amendments to the present main request were not causative of the potential objection of double patenting. Consequently, in line with G 3/14, the issue of double patenting was not to be examined in the opposition proceedings.
• 2.3 [ ] opponent 8 did not provide any arguments why the opposition division's reasoning regarding the non-admittance of the objection was not correct. The objection of double-patenting does therefore not form part of the appeal proceedings."

EPO 

The link to the decision is provided after the jump.

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.

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.

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 0943/17 - Double patenting

 Key points

“3.2 Double patenting - G4/19 : Claim 1 of the present divisional application differs from claim 1 [of the parent application which was discussed in T 871/14] in that a randomizing program performs the selection instead of only providing the randomized selection as an option in the user interface as claimed in the parent application. The present application therefore does not claim the same subject-matter as the parent application and the criteria for double patenting set out in G 4/19 (cf. headnote) are not fulfilled.”

T 0943/17 - 

https://www.epo.org/law-practice/case-law-appeals/recent/t170943eu1.html

3.2 Double patenting - G4/19

Claim 1 of the present divisional application differs from claim 1 discussed in T 871/14 in that a randomizing program performs the selection instead of only providing the randomized selection as an option in the user interface as claimed in the parent application. The present application therefore does not claim the same subject-matter as the parent application and the criteria for double patenting set out in G 4/19 (cf. headnote) are not fulfilled.

G 4/19 - Double patenting

 Key points

• The Enlarged Board confirms the EPO's practice that applications can be refused for double patenting under Art. 125. The referring Board had doubted Art. 125 as the legal basis.
• The Enlarged Board: “Article 125 is dealt with in the Minutes of the Proceedings of Main Committee I [of the 1973 Diplomatic Conference], points 665. to 669., with points 665. to 668. being dedicated to the issue of double patenting, while point 669. records the unanimous opinion that the EPO may correct inadvertent errors [note: see Rule 139 EPC 2000]. ”
• “Point 665. is worded as follows in the English version: "In connection with Article 125, it was established at the request of the United Kingdom delegation that there was majority agreement in the Main Committee on the following: that it was a generally recognised principle of procedural law in the Contracting States that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing."” “ the proper interpretation of this statement is rather that it "... followed from the ... principles of procedural law in the Contracting States that only one European patent [can be granted]...". ”
• “the preparatory documents demonstrate with overwhelming certainty that there was a real and effective agreement that the European Patent Office should prohibit double patenting by taking into account principles of procedural law generally recognised in the Contracting States, i.e. by a direct application of Article 125 EPC. Furthermore, there must have been a common understanding among the potential signatories to the Convention that this majority agreement was made on behalf of the Plenary of the Diplomatic Conference and recorded with the purpose of defining the scope of Article 125, and that therefore the principle expressed in the agreement [i.e. point 665 cited above] formed part of the Convention. ... the competent legislator, here the Diplomatic Conference, established that the prohibition on double patenting was a generally recognised principle as a question of fact, and in addition made it clear that this was a principle falling under Article 125 EPC as a matter of interpretation of the law, [and] the Office was thereby not only empowered to apply this principle but effectively also duty-bound to do so.”
• The above are some of the key paragraphs of the very thorough legal analysis of the Enlarged Board.
• The Enlarged Board also notes that Art. 123(2) (added subject-matter) is a ground for refusal even though it is comprised in Chapter I of Part VII of the EPC with the title ‘Common provisions governing procedure’. Hence, the term ‘procedural law’ in Article 125 does not exclude consideration of double patenting under that provision: “Thus the Enlarged Board concludes that, from a purely systematic point of view, Article 125 EPC may provide a legal basis for the regulation of double patenting - whether this means permitting or prohibiting it - even though a consideration of substantive issues such as "the same subject-matter" may be involved as well.”
• “The Enlarged Board reads Question 2.1 narrowly, and as essentially asking whether the possible legal basis in the EPC is equally applicable to the three identified constellations, or whether there may be reasons for treating them differently, for example by establishing an exception for one of them. Further questions which may arise in connection with double patenting, such as the question of the same invention or the same applicant, are not considered to be covered by the referral.”
• The interested reader may consult C-IV, 6.4, in particular the reference to C-VI,9.6 of the first edition of the Guidelines (1978) [not published on the EPO website currently], basically the GL then required the difference between the claims of the two application to ‘conceivably be of inventive significance’. (Note, I do not think the EPO should revert to the 1978 practice).

Headnote

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.

2.1 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.

2.2 In view of the answer to Question 2.1 a separate answer is not required.

Comment: headnote 1 should probably be understood in the question of the referral: based on the literal wording of hn.1 the granted European patent may also have a later effective filing date (under USA patent law, (obviousness-type) double patenting objections can apparently be based on later filed patent applications. 

G 4/19 - G 0004/19

https://www.epo.org/law-practice/case-law-appeals/recent/g190004ex1.html

Summary of facts and submissions

I. By its decision in appeal case T 0318/14 dated 7 February 2019 (OJ EPO 2020, A104) and issued in writing on 20 December 2019, Board of Appeal 3.3.01 referred the following questions 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?"

II. The appeal before the referring Board (in the following "the Board") was against the decision of the Examining Division refusing European patent application No. 10718590.2 under Article 97(2) EPC in conjunction with Article 125 EPC. The Examining Division found that claim 1 of the sole claim request on file was directed to subject-matter which was identical to the subject-matter claimed in European patent No. 2 251 021, which was granted for the European patent application from which the application-in-suit claimed priority. Granting a second patent on this claim was held to be contrary to the principle of the prohibition on double patenting (in the following also referred to as just "the prohibition"), this being an accepted principle in most patent systems, as stated in the Guidelines. The applicability of the prohibition was furthermore confirmed by an obiter statement in the Enlarged Board of Appeal's decisions G 1/05 and G 1/06. The Examining Division held that the prohibition also extended to European applications claiming an internal priority from another European application, and that decision T 1423/07 was not applicable because the applicants were different in that case.

G 4/19 - Double patenting prohibited under Art. 125 EPC

 Key points

• The decision in G 4/19 was given and the press release can be found here.
• The Enlarged Board “stated that the prohibition on double patenting constitutes a principle of procedural law within the meaning of Article 125 EPC and is generally recognised in the Contracting States.”
• Hence, an application can be refused under Article 125 EPC if it claims the same subject-matter as a European patent which has been granted to the same applicant  (and Article 54(2) and (3) do not apply).

The Enlarged Board of Appeal answered the referred questions as follows:

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.
2.1 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.
[...]

G 4/19 - Referral - Double patenting - T 0318/14

Key points

• 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 T0318/14 Double patenting
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.