Enlarged Board of Appeal rules in G 4/19 that patent application can be refused on the basis of double patenting

Yesterday, the Enlarged Board of Appeal answered the questions referred to it by Technical Board of Appeal 3.3.01 in case T 0318/14 (“Double patenting”).

The referred questions were the following:

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?

epi had advised in its amicus curiae brief that question 1 should be answered in the negative. In epi’s opinion, a European patent application could not be refused on the ground of double patenting. epi had also argued that if, contrary to epi´s opinion, the Enlarged Board should consider it possible to refuse a patent application for the reason of double patenting, this should only be applied in cases concerning (1) identical subject-matter (identical wording of the claims), (2) same applicant, (3) same filing date, (4) same priority date and (5) same or overlapping designated states.

However, the Enlarged Board answered question 1 in the affirmative and confirmed the prohibition of double patenting.

The Enlarged Board arrived at this answer by applying Article 125 EPC as the legal basis for a prohibition of double patenting. Article 125 EPC reads:

Reference to general principles
In the absence of procedural provisions in this Convention, the European Patent Office shall take into account the principles of procedural law generally recognised in the Contracting States.

The Enlarged Board interpretated Article 125 EPC in line with the principles set out in Articles 31 and 32 of the Vienna Convention on the Law of Treaties.

The Enlarged Board reasoned that the regulation of double patenting does not seem to be excluded from the scope of Article 125 EPC from a systematic point-of-view, even though a consideration of substantive issues may be involved as well.

It was then examined whether a principle of prohibition of double patenting exists and is generally recognised in the Contracting States. The Enlarged Board extensively consulted the travaux préparatoires in this regard. It came to the conclusion that “the preparatory documents demonstrate with overwhelming certainty that there was a real and effective agreement that the European Patent Office should prohibit double patenting […].” The Enlarged Board clarified that the prohibition on double patenting only applies in the case of overlapping designations under Article 79 EPC.

With regard to question 2.1, the Enlarged Board replied that the prohibition applies to all three constellations identified. Question 2.2 did not require a separate answer.

The Enlarged Board thus answered the 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.

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

The decision of the Enlarged Board can be found here