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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.



source http://justpatentlaw.blogspot.com/2021/07/g-419-double-patenting.html
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