EPO - No general ban on double patenting, T 307/03 (OJ EPO 2009, 422) not followed, internal priority: patent may be granted on application identical to the patent granted on priority application

EPO, Technical Board of Appeal 3.3.02, 27 April 2010, Decision No. T 1423/07, not to be published in OJ, – Cyclic Amine derivative/BOEHRINGER INGELHEIM VETMEDICA GmbH

The applicant filed a first European application on which a patent was granted. Claiming the priority of the first application, he filed a second European application which was refused by the Examining Division on the grounds that the claims on file were identical to the claims granted in the first application from which priority was claimed. Reference was made to the Guidelines for Examination according to which patents in the name of the same applicant must not contain claims of substantially identical scope.

 

The Board of Appeal disagreed. Noting that the EPC does not contain an explicit provision prohibiting double patenting, the Board examines whether the Guidelines are correct in stating that it is an accepted principle in most patent systems that a patent cannot be granted to the same applicant for one and the same invention which might be a basis for applying such principle in accordance with Art. 125 EPC. The Board finds that most Contracting States have provisions prescribing that a national patent ceases to have effect in case of double patenting with a European patent. However, this is not related to double patenting in the pre-grant stage. The Board finds no principle of procedural law generally accepted in the Contracting States that the refusal of an application for double patenting is provided for.

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Turning to the specific situation of an internal priority, the Board addresses the German law under which the earlier application from which priority is claimed is deemed withdrawn with the declaration of priority. In this situation double patenting cannot arise.

In T 307/03, holding that a patent cannot be granted on a divisional application claiming the same subject-matter as the parent application, even not if the claims of the divisional application are broader, the prohibition of double patenting was derived from Article 60 EPC. Board 3.3.02 concludes that this provision is related to entitlement and cannot serve as a basis for refusing an application.

Eventually, the Board deals with decision G 1/05 (OJ EPO 2008, 271) in which the Enlarged Board of Appeal accepted that the principle of prohibition of double patenting exists on the basis that an applicant has no legitimate interest in the grant of a further patent for the same subject-matter as in a patent already granted to him. In this respect, the situation dealt with in G 1/05 of a parent and a divisional application, having the same date of filing, is quite different from the situation underlying the appeal. The term of the patent to be granted on the second application is to be calculated from its own filing date and not from the filing date of the priority application. Thus, the applicant has a legitimate interest in obtaining longer protection based on his second application.

Read the decision (in English) here.

Comments

[Leo Steenbeek]

I would believe that it is important in this decision that because the other patent was the priority application, filed about one year before the present application, the applicant has a legitimate interest in getting a patent on the second application, as that second patent would expire about one year later than the earlier patent.

From the discussion on the Enlarged Board of Appeal decisions G 1/05 and G 1/06, as well as the discussion of German case-law in this decision, I would draw the conclusion that absent any such legitimate interest, the EPO ban on double patenting is still very much alive.