Enlarged Board of Appeal of the European Patent Office
New Referral relating to double patenting
A technical board of appeal of the EPO has recently referred questions regarding double patenting to the Enlarged Board of Appeal.
A) More particularly, the questions referred to the Enlarged Board of Appeal are 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 :
- on the same date as, or
- as a European divisional application (Article 76(1) EPC) in respect of, or
- 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 is to be noted that, since the corresponding decision of the Board of Appeal has not yet been published, the above-mentioned questions have been inferred from the minutes of the oral proceedings, which took place on 7th February 2019.
B) The response to these questions is relevant in practice. Indeed, it will in particular influence the prosecution of divisional patent applications at the EPO, as well as the best practices in terms of drafting of such patent applications.
We will keep you informed about any developments regarding this case.