A referral to the Enlarged Board of Appeal re double patenting, finally

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On appeal against the decision of an ED to refuse an Euro-PCT application of Nestec SA for reasons of an alleged ‘internal double patenting’ issue, i.e. a clash between a granted European patent and an Euro-PCT application claiming priority thereof, EPO Board of Appeal 3.3.01 is going to refer questions to the Enlarged Board of Appeal. The reasoned decision is not yet available, but the minutes of the hearing and the prior communication of the Board make pretty clear what to expect. In the communication (¶4),

[t]he board agrees with the appellant that there is no uniform practice and even conflicting case law on the question of whether and to what extent double patenting is prohibited.

In particular with respect to ‘internal’ double patenting issues, the Board points to decision T 2461/10 that (in an obiter dictum in ¶¶12-14) explicitly disagreed with the earlier decision T 1423/07 that had confirmed an applicant’s legitimate interest in such situations of double patenting; see hn 2.

Furthermore, it is not yet established whether Art. 125 EPC provides the legal basis for the requirement of a legitimate interest. While T 587/98 and T 1423/07 held that this was not the case, T 2461/10 and T 2563/11 held that the intention of the legislator was to rule out double patenting arising from two European patent applications, with reference to a statement in the main committee of the diplomatic conference by the British delegation with respect to Art. 125 EPC 1973 (M/PR/I, 64, ¶665):

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 procedureal 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 referring Board spotted yet a further divergence in the case law, i.e. on the scope of a prohibition of double patenting. The Enlarged Board of Appeal in decisions G 1/05 (¶13.4) and G 1/06 referred to the ‘same subject-matter’. While T 307/03 (hn 3) interpreted this to also cover situations where the subject-matter of the already granted claim is (only) encompassed by the later claim, the apparent majority of the case law confined the issue to identical subject-matter only; see T 2461/10 (¶¶21-26) and T 2563/11 (¶¶2.8-2.14). Even though one might thus consider T 307/03 an isolated decision, the referring Board notes that the Enlarged Board in G 2/10 in ¶4.5.5 had left it open whether in cases where an applicant obtains protection for a preferred embodiment first, and later pursues the general teaching in a divisional application,

[…] a disclaimer would be necessary in order to avoid the so-called prohibition of double protection.

See the EPO Register and the online file wrapper for any further information about the issues at stake.

The questions that are upon to be referred to the Enlarged Board read as follows:

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 latter case, does an applicant have a legitimate interest in the grant of 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?

Stay tuned, this will get interesting …

Reported by Martin WILMING

REFERRAL TO THE ENLARGED BOARD OF APPEAL
in case T 318/14 by Board 3.3.01

Chairman: A. Lindner
Member: T. Sommerfeld
L. Bühler

Minutes of the hearing of 7 February 2019:

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Communication of the BoA before the hearing:

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