Dr Juliette Boynton

January 2020

In an appeal from the Examining Division, the Board of Appeal have referred questions to the Enlarged Board in relation to double patenting, and specifically in relation to an application which claims priority from an earlier granted European patent. Surprisingly, while the case was heard on 7 February 2019, the Decision has only just been issued.

It appeared that the issued of double patenting was settled in Decisions G 1/05 and G 1/06, where the Board held that:-

“The Board accepts that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter if he already possesses one granted patent therefor. Therefore, the Enlarged Board finds nothing objectionable in the established practice of the EPO that amendments to a divisional application are objected to and refused when the amended divisional application claims the same subject-matter as a pending parent application or a granted parent patent.”

However, the cases were ones of divisional applications thus they have the same filing date, in addition to identical descriptions and claims.

However, the new case was one in which a later application was filed claiming priority from an earlier application, which proceeded to grant. The later application was then rejected on the grounds that the applicant could have no legitimate interest in the grant of a second patent, identical to the first. The applicant suggested that there was a legitimate interest, namely up to one extra year of patent term.

A referral to the Enlarged Board can be made in order to ensure uniform application of the law and because a point of law of fundamental importance needs to be answered. In this case the applicant did identify conflicting case law including the following:-

• T1423/07 indicated that the later expiry date provides a legitimate interest in the grant of a second patent to the same subject matter.
• T2461/10 suggested that such double patenting would result in 21 years of protection, which is contrary to the term of a patent being 20 years, but did not address “legitimate interest” test.
• T307/03 suggested that the right to a European patent is exhausted once a patent is granted, and thus there is no right to a second patent.

The Board of Appeal appeared to have some sympathy with both the Examining Division and the Applicant, and so referred the following questions to the Enlarged Board:-

“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

1. a) on the same date as, or
2. b) as a European divisional application (Article 76(1) EPC) in respect of, or
3. 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?”

It could be some time before the Enlarged Board provides its Decision on this matter, having other referrals also pending. However, we will report on the Decision once received.

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