EPO, Technical Board of Appeal 3.3.02, 27 April 2010, Decision No. T 1423/07, not to be published in OJ, – Cyclic Amine derivative/BOEHRINGER INGELHEIM VETMEDICA GmbH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