G4/19 Prohibition of double patenting
1. On June 22, 2021 the Enlarged Board of Appeals rendered its decision concerning the question of the prohibition of double patenting.
2. The questions referred to the Enlarged Board of Appeals related were:
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?
3. The Enlarged Board of Appeal replied to the questions as follows:
1. A European patent application can be refused under Articles 97(2) and 125 EPC if it claims the same subject-matter as a European patent which has been 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 The application can be refused on that legal basis, irrespective of whether it
a) was filed on the same date as, or
b) is an earlier application or a divisional application (Article 76(1) EPC) in respect of, or
c) claims the same priority (Article 88 EPC) as the European patent application leading to the European patent already granted.
The question 2.2 was moot in light of the answer to the previous question.
4. Thus, in every possible configuration, the prohibition of double patenting applies.
In light of the decision, it is questionable that applicants seeking to cover the same invention via a first EP application and via a subsequent EP application filed within one year under priority in order to cover more than 20 years can still do so.
This IP Alert is for information purposes only and does not constitute legal advice.