Double patenting referral to EPO Enlarged Board

Double patenting (when an applicant files two patent applications for substantially the same subject matter) is not explicitly dealt with under the European Patent Convention. However, the European Patent Office (EPO) generally adopt a policy that it will not grant two patents to the same applicant with the same scope. This prohibition on double patenting is based on the notion that an applicant has no legitimate interest in proceedings leading to the grant of a second patent for the same subject-matter1.

However, what if the applicant does have a legitimate interest in having two patents for the same invention?

European patents have a term of up to 20 years from the filing date, and in the world of pharmaceuticals, every single day of that term can have high commercial value. It is common to file patent applications claiming priority to an earlier application within the 12-month priority period of the earlier application. This means that the term of the priority-claiming application will expire later than the earlier application.

In this case (T0318/14), a first European application was filed and then a second European application was filed claiming priority to the first one. The first application granted and so the EPO intended to refuse the second application under its principle against double patenting. However, the applicant asserted that it did have a legitimate interest in the second application based on its later expiry date.

The Board of Appeal therefore referred the following questions to the Enlarged Board of Appeal, the most senior level of appeal available from decisions by the EPO:

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.

It appears that a simple fix to get the second application around this double patenting rejection would be to transfer it to a subsidiary of the applicant, thereby avoiding the two applications being from the “same applicant”. However, the applicant does not appear to have tried this, and there may be commercial reasons that this is not possible.

The case will now move to the Enlarged Board and into a process which typically takes one to two years to reach a decision. It will therefore be some time before we find out whether this filing strategy can be used to maximise the term of a European patent. Pending the outcome of the referral, processing of applications to which the decision is relevant can be stayed.

1 EPO Enlarged Board of Appeal decisions G1/05 and G1/06