Double patenting referral to EPO Enlarged Board

The European Patent Convention does not include any explicit provisions preventing the grant of two patent applications to the same applicant that both claim the same subject-matter. Nonetheless, the European Patent Office (EPO) generally prohibit the grant of two patents to the same applicant with the same scope, taking the view that an applicant has no legitimate interest in a second patent for the same subject-matter.

As we previously reported, in appeal case T0318/14, the EPO intended to refuse an application under its principle against double patenting. What was different in this case was that the earlier European case had granted and the applicant argued that it had a legitimate interest due to the later expiry date of the second patent application.

The case has now progressed with its written referral and has been allocated the appeal number G4/19.

Pending the outcome of the referral, processing of applications to which the decision is relevant can be stayed. The questions referred to the Enlarged Board of Appeal were modified slightly after the original announcement:

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?

This has been a relatively busy period for the EPO’s Enlarged Board of Appeal, and of the four cases referred in 2019, only one has been decided on. Therefore, it is expected that the answer to these questions may not be decided for some time.