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Tuesday, 24 March 2009

Derk Visser on Double Patenting

The IPKat commented a few days ago on a recent, as yet unpublished, decision of the EPO Board of Appeal, in which the Board considered that Article 60 EPC provided basis for prohibition of double patenting. This prompted a few comments, including one apparently made by Derk Visser, a name which will be well known at least to all EQE candidates. Derk's comment is worth reproducing, if only for the benefit of those who do not keep track via the IPKat's comment feed. He writes:

"The issue of double patenting was extensively discussed in the preparatory documents of the EPC 1973. Since double patenting was regarded as an issue relating to patents, not to patent applications, and the EPC did not relate to the maintenance of patents, it was left to the contracting states to permit or prohibit simultaneous protection (Travaux Préparatoires 1969, BR/7 e/69, p. 8 point 17). The Inter-Governmental Conference in 1972 endorsed this view, a large majority of the interested circles being in favour of this (BR/168/72). As a consequence, the EPC does intentionally not contain a prohibition on double patenting.

The board of the recent decision T307/03 was probably unaware of the above (see reason 2.3 of the decision). Hence, its attempt and probably any attempt, to base a prohibition of double patenting on the present EPC results a contortion of the law.
Use of Art.60 as a basis for prohibiting double patenting in the recent decision T307/03 is legally not sound, because the provision relates to who has the right to a patent, not to the constitution of the right, as already stated in the first comment of this blog. The same applies to Art.58, which relates to who may file.
Art.125 cannot be used to introduce a prohibition on double patenting in the EPC, because the text of the provision makes abundantly clear that it relates to procedural matters only, not to substantive issues such as double patenting (see also T587/98 r.3.6). The statement on double patenting in relation with Art.125 in the Munich Conference, cited by Erik in the above contribution, shows that the UK delegation could benefit from some training in the EPC.
Art.139(3) is not intended as a general prohibition on double patenting. Its purpose is to avoid that for a single invention both a European and a national patent is granted. It was intended as a first step towards abolition of national patents (Travaux Préparatoires 1962, 3076/IV/62-D, p. 114a).
The sections C-IV,7.4 and C-IV,9.1.6 of the Guidelines are no basis for refusing an application on the ground of double patenting (T587/98 r.3.5 and 3.6).
The statement in decision G1/05 r.13.4 regarding a refusal on the ground of double protection as being non-objectionable, appears to be an oversight on the part of the EBoA.

The legislator clearly missed the opportunity of the EPC2000 to introduce the prohibition in the law. In spite of the clear statements of the legislator that double protection should be dealt with at a national level, most national laws do not have a provision to this end. It is surprising that such a broadly supported principle has not been codified at both international and national level. Hence, we will probably have to put up with case law stretching provisions far beyond the intention of the legislator."

The IPKat thanks Derk for his contribution, and wonders what led this particular Board to arrive at their apparently unsound line of reasoning, particularly when they had nearly 2 years to consider it. Is there more to it than meets the eye, or is this simply another 'rogue' decision that will be quietly swept under the carpet (or, perhaps, overturned by the Enlarged Board) in due course?

18 comments:

Anonymous said...

There probably is more than meets the eye, in my opinion.

In T587/98 the board gave a solid reasoning on why the prohibition of double patenting has no basis in the EPC.

Nevertheless, in G1/05 (point 13.4), the enlarged board explicitly sanctions the practice in first instance of not allowing double patenting, but:
- it does not provide a legal basis for this practice
- it does not refer in any way to T587/98
- the question is only dealt with "en passant"

Therefore, maybe in order to clarify matters, it was necessary to have two incompatible decisions to fulfill the requirements of Art. 112(1)(b) EPC, and hence a bogus reason (come on, interpreting "a" as "one and only one" is pretty far-fetched) was found to nevertheless come to a different conclusion than T587/96 ?

David said...

I have no idea what made me spell Derk's name incorrectly. Apologies. Maybe I was thinking of Douglas Adams...

Anonymous said...

There is nothing more than meets the eye ...
The boards are completely independent from the president of the EPA and can refer any relevant question to the EBA on their own motion (A. 112(1)(a)EPC). They do not need two incompatible decisions for that.
This is nothing more than a strange decision that will very probably fade away with time ...

Anonymous said...

“In connection with Article 125, it was established at the request of the United Kingdom that there was majority agreement in the Main Committee on the following: that it was a generally recognized principle of procedural law in the Contracting states that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing.”

“The statement on double patenting in relation with Art.125 in the Munich Conference, cited by Erik in the above contribution, shows that the UK delegation could benefit from some training in the EPC”.

Is it not oversimplistic to say that the UK delegation got it wrong ?

Is it not an issue of where does the limit between procedural matters and substantive issues lie, according to common law tradition as opposed to civil law tradition ?

In common law, is not everything basically a question of procedural law ?

Anonymous said...

It would be wise to consider what the consequences would be of allowing more than one patent for the same invention. Consider the question of oppositions at the European level (Art. 99 EPC). If a company is allowed to file divisional applications claiming the same subject matter as the previous "parent" application, this would lead to the existence of duplicated rights (with the same priority and filing dates as the parent patent - Art. 76) and would require a potential opponent to file more than one opposition and pay more than opposition fee in order to remove the IP rights to that subject matter. This is clearly unfair. Fairness is a matter of procedural law (re Art. 125) and it is also a generally accepted legal principle in the EPC member states (indeed the Enlarged Board mentioned the concept of the applicant having no "legitimate interest" in having more than one patent for the same invention). If a prohibition of double patenting cannot be interpreted as being a part of the EPC, then likewise it would not appear possible to consolidate opposition proceedings against multiple patents for the same invention - since this would require then same degree of interpretation of the EPC as a ban on double patenting requires.

It is unfortunate that the legislator did not see fit to resolve this in the EPC-2000 revision, however, the working group "Patente" (involved in the drafting of EPC_1973) were unanimous in their opinion that double patenting was not acceptable and this can be seen in the travaux preparatoires to EPC_1973. Furthermore, it is not advisable to simply dismiss the opinion of the Enlarged Board of Appeal, since although the statements made constituted an obiter dictum, they do carry significant weight, when considering their source, although again it is unfortunate that a legal source was not given as a basis for this obiter dictum.

I do agree that the use of Art. 60 in the latest decision would appear to be a distraction from the main issue. While T587/98 ruled out the application of Art. 125, I believe that this was not correct, because as indicated above, the issue of not granting multiple patents for the same invention is only indirectly a matter of substantive law (since it becomes necessary to assess whether or not an application is claiming the same invention as a granted patent), however, the reason behind the ban is one of fairness and "legitimate interest" and as such, IMHO, Art. 125 is applicable.

I share the desire of all sides of this debate for clarification and I would welcome the referral of this question to the Enlarged Board be it by a Technical Board of Appeal or by the President of the EPO.

MaxDrei said...

Some people mistakenly think that the "novelty" provision in any patent law is there to prevent "double patenting". Such people get excited about the use of divisionals because they think it is a loophole in the "no double patenting" law of novelty. They forget that you simply can't use divisionals to extend the 20 year max term on monopoly. We in Europe have Art 54(3) and so don't need to get involved in the American "double patenting" and "terminal disclaimer" superstructure to the basic provisions of "first to file" patent law. Why must we agonise over problems of patent law that might be inherent in US law but were eliminated in Europe when the EPC 1973 came into effect? China had a "one child per couple" law. Are we now to have a "only one patent per patent application" law in Europe?

Anonymous said...

There is clearly no "legitimate interest" in having the "same invention" considered twice. For example, an applicant filing a divisional for the "same invention" just before his appeal is dismissed before the board has no "legitimate interest" in doing so. The same is true for having his application examined twice for the "same invention". This is a matter of procedural law which falls under A.125 EPC. However, the "same invention" has to be exactly that, namely the claims have to be directed to the same subject-matter, and not merely overlapping the ones of the other application.
As somebody remarked, an applicant may have an interest in having a restricted patent being granted quickly and then proceeding with an enlarged scope in a divisional application.
In my view, the prohibition of double patenting applies only for applications having the same independent claims and the legal basis is A 125 EPC in connection with the lack of legitimate interest ("mangelndes Rechtschutzbedürfnis").

Anonymous said...

A referral of the "double patenting" question to the EBA most probably will not help. What can the EBA do other that confirm their earlier opinion in that there is no "legitimate interest" to allow "double" patenting?
However, ignoring the clear cut case of identical claims, the interesting questions are: when exactly does a "double patenting" issue arise and what are the limits of "double patenting", both questions almost always being linked to the particular facts of the case to be decided.
I am confident that the boards of appeal will give due consideration to a well argued position put forward by a party and decide in a sensible manner. Who knows, perhaps the present blog entries will also have a positive effect !

MaxDrei said...

Yes but:

1) Sometimes what a TBA finds to be the "same" invention is incomprehensible. In such cases, natural justice requires that Applicant be given another chance through the vehicle of a divisional, with different claim wording, to define the valuable inventive concept.

2) And, where's the harm, in this pursuance of interest, that might or might not be "illegitimate"? Those claims to the "same" inventive concept ought to get an instant Refusal Decision, but this would be after Applicant has stumped up all the official fees. Lots of money for almost no work. I'm all in favour of replenishment of official coffers in this way. If the mischief is that Applicant has good reason to believe that its identical claims (same substance, even if superficially non-identical form) might get through, at the n'th time of asking, and if his competitors must make allowance for that happening, there's an easy solution for the EPO: just be more robust in announcing "We decided that already. Refused, for the same substantive reasons"

3) Put yourself in the position of an Applicant that gets refused by the TBA for having added matter. Should he get a second run at the TBA, with claims purged of the matter which the TBA (surprisingly) finds to be new?

Anonymous said...

The real objection to double patenting is that the holder of multiple patent rights to the same invention is free to mount multiple infringement actions against the same or different alleged infringers. It matters not if one of the identical patents is declared invalid, since the patentee can simply fall back on one of the identical divisionals.

The basic rule is that an inventor is rewarded with one patent (and only one patent) per invention. There is no possible justification for allowing more than one patent for exactly the same invention. Divisionals are intended to deal with cases in which protection was being sought for more than one invention in a single application. In such a case (and only in such a case) is a divisional justified.

Applicants who use the divisonal route to patent exactly the same invention time and time again are abusing the system and it is unfortunate that EPO examiners continue to allow them to get away with it. This is: (i) in conflict with the basic principle of patent law referred to in the EPO Guidelines which prevents double patenting; (ii) deeply anti-competitive; and (iii) undesirable because it can create a considerable burden on both Courts and litigants in national infringement proceedings.

Anonymous said...

Of course, things would be easier if we would know what exactly "the same invention" meant. It appears that that "the same invention" gets a different meaning in T307/07 when compared to the concept of "the same invention" explained in G2/98.

MaxDrei said...

Anybody agree with me, that the "Anonymous" who posted at 3.33 is addressing us from the top of an ivory tower? He thinks he can tell when two claims, worded differently, are or are not directed to "exactly the same invention". Can you?. It is not as if all claims simply recite "Molecule X". Sometimes they are framed to protect a concept in mechanical engineering, supported by mere embodiments. EPO rejection of anything not found verbatim in the app as filed keeps the lid on the "divisionals as double patents" problem, no? judges in NL and GB give short shrift to such patents, and the loser pays. Anonymous, where do you live? Is it Germany? For which national courts is the problem unbearable? Can you give us examples? Above, I gave you Medinol in NL.

Anonymous said...

I surely hope that the decision T307/07 is not a result of the EPO’s, and apparently other’s, paranoiac attitude towards divisionals. Of course there is abuse but that is nothing new and could have been solved easily by administrative measures suggested in G1/05. Only if such measures would have proven inadequate should the legislator become active (reasons 13.5 in G1/05).
But no, things have developed differently now that the EPO has its “raising the bar” project; why not go to the extremes immediately?

Anonymous said...

"The statement in decision G1/05 r.13.4 regarding a refusal on the ground of double protection as being non-objectionable, appears to be an oversight on the part of the EBoA."

Apparently not when comparing the names of the members in G1/05 and T307/03.

Anonymous said...

@anonymous 3:33:
"it is unfortunate that EPO examiners continue to allow them to get away with it"
I'm afraid you're barking up the wrong tree. The reason why these cases ended up with the BoA in the first place, is because EPO examiners disallowed the double patenting, and in fact do so quite consequently.

Erik said...

Going back to Derk’s remarks, I fully agree with the conclusion regarding the EPC2000: that is a missed opportunity. The arguments regarding Art. 125 EPC however are less convincing in my opinion.

Indeed, double patenting was extensively discussed in the traveaux. A nice “summary” regarding the discussions on collision and double patenting can be found in G1/03 (see point 2.1.1):

“According to the "prior claim" approach, the claims of the later application had to be compared with the claims of the earlier application in the granted version. The purpose of this approach was to avoid double patenting.”

One of the reasons that the prior claim approach was not introduced in the EPC was because:

“the EPO was not a competent body to assess the scope of protection of the patent, since this had to be determined for the comparison with the later application under the prior claim approach pursuant to the applicable national law. For these reasons, the prior claim approach was not considered to fit into the European patent system.”

Nevertheless, despite the fact that no double patenting prohibition provision was introduced in the EPC for the above reasons, the UK delegation requested to have in writing in the Minutes of the Diplomatic conference (a rather authoritative document amongst the documents forming the traveaux) that the Main Committee (not only the UK delegate) regarded the double patenting prohibition as a principle of procedural law:

“In connection with Article 125, it was established at the request of the United Kingdom that there was majority agreement in the Main Committee on the following: that it was a generally recognized principle of procedural law in the Contracting states that a person can be granted only one European patent for the same invention in respect of which there are several applications with the same date of filing.”

Such statement simply cannot be dismissed by saying that they were wrong. On the contrary, I would like to argue that the UK delegation very cleverly “opened” a backdoor for introducing a double patenting prohibition (when required).

The problem regarding the EPO not being competent of assessing of the scope of protection was clarified ten years later in G2/88 (see point 3.3):

“The protection conferred by a patent is determined by the terms of the claims (Article 69(1) EPC), and in particular by the categories of such claims and their technical features. In this connection, Article 69 EPC and its Protocol are to be applied, both in proceedings before the EPO and in proceedings within the Contracting States, whenever it is necessary to determine the protection which is conferred.”

That only leaves the notion of “principles of procedural law” in Art. 125 EPC .

In T 587/98 the Board appears to imply (the reasoning in 3.6 is not very clear in that sense) that the double patenting prohibition is a matter of substantive law without any further substantiation. Indeed, as some commentors already mentioned, determination whether a provision or a principle is one of procedural or substantive law may be counter-intuitive and may depend on the jurisdiction or the system of law (common law-continental law). For example, in Dutch law transitional provisions for a newly introduced law are regarded as substantive law. Similarly, the principle of res judicata - regarded by the Boards as a general principle of procedural law under Art 125 (T 167/93) - is in some countries held to be one of substantive law.

Apparently, the UK delegation wanted to shortcut such discussions by introducing an unambiguous statement in the traveaux.

Anonymous said...

What else could - but hopefulley will not - be easily concluded from Art. 60(1)1 EPC stating "Das Recht auf das europäische Patent steht dem Erfinder oder seinem Rechtsnachfolger zu" / "The right to a European patent shall belong to the inventor or his successor in title" / "Le droit au brevet européen appartient à l'inventeur ou à son ayant cause"?
1: The patent belongs to one and only one inventor.
2: The one inventor must be male.
3: The one male inventor may obtain one and only one patent in (his) life time.
Anything else?
This may reduce the backlog, of course...

Anonymous said...

The last comment is great. Congratulations !

I have a suggestion to overcome T307/03 with exactly the same claim set as in a previous aplication : just assign the second application to your wife, husband, subsidiary, or parent company (choose whichever is the easiest for you) the day before the decision is supposed to be taken. They should be no double patenting objection this way !

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