24/06/2021
Following the referral of a number of questions to the Enlarged Board of Appeal, decision G4/19 has confirmed that double-patenting is a ground for refusal for European patent applications.
Questions referred to the Enlarged Board of Appeal
During appeal proceedings, the Board of Appeal may refer a question to the Enlarged Board of Appeal if a point of law of fundamental importance arises.
On this basis, in February 2019, the Board of Appeal (for appeal number T0318/14) 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 granted to the same applicant which 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 where 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?
The Decision from the Enlarged Board of Appeal
Earlier this week, in decision G4/19, the Enlarged Board of Appeal gave the following answers:
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.
What does this mean?
This decision confirms that the EPO can refuse an application for double-patenting, despite there being no explicit prohibition on double-patenting in the EPC. In other words, the EPO can refuse an application because it claims “the same subject-matter” as a European patent granted to “the same applicant”.
The decision also confirms that it is irrelevant whether the applicant has a legitimate interest in obtaining two patents for the same subject-matter. This is disappointing because such legitimate interests can arise in practice. For example, where the application was filed later than, and claimed priority from, the granted patent, the application could have been used to effectively extend the term for which patent protection is available. It therefore seems that this decision may discourage applicants from proceeding to grant with priority applications filed at the EPO.
Questions left unanswered
Whilst this decision confirms that applications can be refused for double-patenting and therefore provides greater legal certainty in relation to this aspect of the law, it is disappointing that the Enlarged Board of Appeal have not taken this opportunity to address other, closely related aspects.
For example, the Enlarged Board of Appeal have not addressed what is meant by “the same subject-matter”. It is therefore unclear how different claims must be to avoid a double-patenting objection.
As another example, the Enlarged Board of Appeal have not addressed what is meant by “the same applicant”. It is therefore unclear whether a double-patenting objection can be avoided or overcome simply by assigning the application to another applicant prior to grant. Given that this decision leaves such important questions unanswered, we expect to see different interpretations between the various Boards of Appeal, and possibly further referrals to the Enlarged Board of Appeal, in the future. We will keep you updated.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
