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28 June 2021
On 22 June 2021 the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) rendered its decision in the case G 4/19 dealing with the matter of the prohibition of double patenting under the European Patent Convention (EPC). Points 1 and 2.1 of the EBA’s order leave no room for doubt or speculation:
- “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.”
Accordingly, Examining Divisions – departments competent to examine whether European patent applications meet the requirements of the EPC and to refuse applications for which this is not the case – can henceforth be expected to refuse applications which claim the same subject-matter as a European patent that has been previously granted to the same applicant. This only applies insofar as the designated contracting states between the application and the earlier patent overlap.
While invoking the prohibition of double patenting in the circumstances or ‘constellations’ described in points 2.1 a) and b) of the order – those of a pair of applications filed in parallel, and of a parent-divisional application pair, respectively – has already been an established practice of Examining Divisions, the present EBA decision clarifies that no distinction is to be made for the constellation under point 2.1 c) of the order. Therefore, a later European patent application claiming priority of an earlier European patent application which has in the meantime been granted, can be refused for reasons of double patenting despite the applicant’s undeniable interest in having the later application granted also – namely, the benefit of longer patent term.
The EBA has dealt with the prohibition of double patenting in narrow sense, examining only whether there was a legal basis in the EPC for this prohibition – and, based on its analysis of the preparatory documents of the Convention, concluding that there indeed was by way of Art. 125 EPC, which requires the EPO to take into account the principles of procedural law generally recognised in the Contracting States in the absence of procedural provisions in the EPC. The Board did not in any way comment on the substantive issue of what constitutes “same subject-matter” or how “same applicant” should be defined. Moreover, the Board’s findings are restricted to examination proceedings, and do not extend to the question whether and how the double patenting prohibition might be applicable in opposition proceedings.
The present decision needs to be taken into account particularly when deciding on whether to allow an earlier European application proceed to grant, when a later EP application claiming the former’s priority and directed to the same subject-matter is also pending (and can afford longer patent term). On the other hand, the decision does not change the current practice before the Examining Divisions that a later patent can be obtained (typically, a divisional application) insofar the claimed subject-matter is not the same as that claimed in the earlier granted patent.